Ex Parte SULLIVAN

Patent Trial and Appeal Board

Dec 14, 2018

14809802 (P.T.A.B. Dec. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/809,802 07/27/2015
84649 7590 12/18/2018
Symbus Law Group, LLC
Cliff Hyra
11710 Plaza America Drive
Suite 2000
Reston, VA 20190
FIRST NAMED INVENTOR
Steven SULLIVAN
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
7247-108 8218
EXAMINER
KOCH, GEORGE R
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
12/18/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@symbus.com
chyra@symbus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN SULLIV AN 1
Appeal2018-000378
Application 14/809,802
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and
JANEE. INGLESE, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Steven Sullivan ("Sullivan") timely appeals under 35 U.S.C. § 134(a)
from the Final Rejection2 of all pending claims 22-35 under
35 U.S.C. § 112(1), as lacking an enabling disclosure. We have jurisdiction.
35 U.S.C. § 6. We reverse.
1 The real party in interest is identified as the sole inventor, Steven Sullivan.
(Appeal Brief, filed 3 May 2017 ("Br."), 3.)
2 Office Action mailed 2 December 2016 ("Final Rejection"; cited as "FR").
Appeal2018-000378
Application 14/809,802
A. Introduction 3
OPINION
Claims based on the underlying Specification come before us for a
third time. In the first two appeals, 4 the claims were directed to a system
comprising a device for mechanically stressing a precursor sheet for
nanotubes, a device for cleaving the sheet into strips that, when circularized,
form nanotubes, and "a device that supplies or removes the sheet of
material."5 We affirmed enablement rejections on the grounds that the
mechanical cleavage and subsequent manipulation of graphene sheets was
not enabled. Following our second decision in Appeal 2013-001803,
Sullivan filed the present application as a continuation with amended claims.
Sullivan represents that the present subject matter on appeal is
described in the '802 Specification in paragraphs [062]-[063], and illustrated
in Figure lB (reproduced in relevant part on the following page). The
claimed invention relates to a system 106 (independent claim 22) and a
method (independent claim 29), for treating an aqueous volume of graphite
3 Application 14/809 ,802, Systems and methods of manufacturing nanotube
structures, filed 27 July 2015, as a continuation of 10/950,793,
filed 28 September 2004, now abandoned, which claims the benefit of
60/577,678, filed 7 June 2004, and of 60/565,610, filed 27 April 2004. We
refer to the '"610 Specification," which we cite as "Spec."
4 Appeal 2010-002147 (aff'd, 28 January 2011) and Appeal 2013-001803
(aff'd 20 February 2015; Req. Reh'g den'd 29 May 2015), both in
application 10/950,793.
5 See, e.g., the Opinion in Appeal 2013-001803 at 3.
6 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
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Appeal2018-000378
Application 14/809,802
feedstock in reservoir 11 by contacting the feedstock with a rotating drum 12
partially submerged in the reservoir and exposing the feedstock material on
the surface 121 of drum 12 to ionizing radiation provided by source 13,
which can be a laser. The ionizing radiation is said to ionize the non-carbon
atoms present in the material in the graphite feedstock transferred to the
exposed surface 121 of drum 12 by ionizing them into a gas so "they may be
subsequently be desorbed from the later of feedstock material."
(Id. at [063].) .
{Figure IB is reproduced in part below}
13
11
{Figure IB, reproduced in part, shows graphite-treating system 10}
Thus, the system now claimed corresponds, in a general way, to the "device
that supplies ... the sheet of material" recited in the claims at issue in the
previous appeals.
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Appeal2018-000378
Application 14/809,802
Claim 22 is representative and reads:
A system, comprising:
a reservoir holding an aqueous volume of graphite feed
stock material;
a rotating drum partially submerged within the aqueous
volume of graphite feed stock material in the reservoir;
an ionizing radiation emitter
adjacent to the drum and
configured to emit ionizing radiation onto a portion of
the graphite feed stock which is on the rotating drum as
it rotates out of the aqueous volume in the reservoir,
to remove non-carbon atoms from the graphite feed
stock onto which the ionizing radiation is emitted by
ionizing them into a gas.
(Claims App., Br. 8; some formatting, and emphasis added.)
B. Discussion
The Board's findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Sullivan urges the Examiner erred harmfully in adhering to the
Board's affirmance of a rejection for lack of enablement of claims in the
parent application 7 because the present claims [ unlike the claims in the
parent application] do not require the presence or creation of graphene.
(Br. 6.)
7 Application 10/950,793, Appeal 2013-001803, entered 20 February 2015;
Req. Reconsideration denied, 29 May 2015.
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Appeal2018-000378
Application 14/809,802
The Examiner finds that the only product disclosed resulting from the
claimed methods is graphene sheets. The Examiner states,
(Ans. 6.)
[b ]y deleting the term "graphene sheets", applicant makes the
claim less enabled by making the claims unclear. If the claimed
system and method does not manufacture graphene sheets from
graphite feed stock, it is unclear and non-enabled as to any
other manufactured product from the graphite feed stock
because applicant does not disclose or enable any other product
being manufactured by the claimed method and apparatus.
There are several difficulties with the Examiner's interpretation of the
claims. First, the Examiner does not explain why the claims are "unclear
and non-enabled as to any other manufactured product," i.e., any product
other than "graphene sheets from graphite feed stock." It is well-settled that
an applicant need not understand why a process works, or exactly what are
the starting materials, or exactly what are the ending materials. Few if any
processes of transforming real-world materials are so well known and
understood at the atomic level. Rather, the purpose of the enablement
requirement is to ensure that a person having ordinary skill in the art, given
the general state of knowledge and the teachings provided by the
specification, would have been able to make and use the claimed invention
without undue experimentation as of the effective filing date.
In the present case, the Examiner has not shown that the routineer
would have been unable to prepare the recited "aqueous volume of graphite
feed material," or that the rotating drum partially submerged in that volume
would not bring a portion of the graphite feedstock out of the reservoir on its
surface, or that the non-carbon atoms present in that portion of the graphite
feedstock would not be removed when exposed to appropriate ionizing
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Appeal2018-000378
Application 14/809,802
radiation that "ioniz[ es] them into a gas." At first glance, it seems ( although
we do not decide, in the first instance) that Sullivan has merely ceased to
include the hypothesized characterizations of the results of the steps from the
claimed process. Although the claims are in this regard undoubtedly
broader, the Examiner has not explained why knowledge of the atomic level
detail of what material is exposed to the ionizing radiation would have been
critical to carrying out the invention. Put another way, the Examiner has not
explained what "experimentation" would have been required to make and
use the claimed system merely because one does not know the nature of the
material on the drum. Moreover, the Examiner has not explained why that
amount of experimentation would have been "undue." No other aspect of
the claimed invention has been challenged.
We decline to speculate on these matters in the first instance, as our
primary role is review, not examination de novo.
To be clear, the affirmances in the prior appeals were based on the
determination that the provision of free-standing graphene sheets suitable for
mechanical cutting into strips, and the mechanical cutting of those strips into
a form that could then be rolled up to form nanotubes were not, on the
record before us, enabled. For the reasons given supra, the Examiner has
failed to show why those limitations are a necessary part of the invention as
now claimed. It is well-settled that it is improper to read limitations from
preferred embodiments described in the Specification into the claims. In re
Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
In conclusion, we are persuaded by Sullivan of harmful error in the
appealed rejection, and we therefore reverse.
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Application 14/809,802
C. Order
It is ORDERED that the rejection of claims 22-35 is reversed.
REVERSED
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