Ex Parte Thunhorst et al

Patent Trial and Appeal Board

Sep 20, 2017

13154615 (P.T.A.B. Sep. 20, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/154,615 06/07/2011 Kristin L. Thunhorst 66719US004 1369
32692 7590 09/22/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
DESAI, KAUSHIKKUMAR A
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
09/22/2017 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KRISTIN L. THUNHORST and EMILY S. GOENNER
Appeal 2016-005789
Application 13/154,615
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kristin L. Thunhorst and Emily S. Goenner (“Appellants”)1 appeal
under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—9
and 13—22.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is 3M Company and its
affiliate 3M Innovative Properties Company. Appeal Br. 3.
2 Claims 10—12 are cancelled. Appeal Br. 12 (Claims App.).
Appeal 2016-005789
Application 13/154,615
THE CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and is
representative of the claimed subject matter on appeal.
1. A pressure vessel comprising:
a wall circumferentially enclosing an open volume capable
of being filled with a fluid, wherein the wall comprises an interior
surface adjacent the open volume and an exterior surface
opposite the interior surface, a first end, a second end, and an
axial direction;
wherein the wall comprises a composite layer comprising
a resin system impregnated with fibers and a plurality of surface-
modified nanoparticles, and further wherein the surface-
modified nanoparticles comprise a core comprising calcite and a
surface-modifying agent ionically associated with the core.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Goetz US 5,648,407 July 15, 1997
Carter US 2003/0111473 A1 June 19, 2003
DeLay US 2005/0260373 A1 Nov. 24, 2005
Ford US 2007/0215841 A1 Sept. 20, 2007
Goenner WO 2008/027979 A2 Mar. 6, 2008
REJECTIONS
I. Claims 1—4, 7—9, and 13—19 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over DeLay, Goetz, and Ford. Final Act. 3—6.
II. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over DeLay, Goetz, Ford, and Carter. Id. at 6—7.
III. Claims 20-22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over DeLay, Goetz, Ford, and Goenner. Id. at 7—9.
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Appeal 2016-005789
Application 13/154,615
OPINION
Rejection I
The Examiner’s rejection of independent claim 1 is predicated on the
determination that it would have been obvious to modify “Delay[’s] resin
system as taught by Ford to provide [a] calcite core, since it has been held to
be within the general skill of a worker in the art to select a known material
on the basis of its suitability for the intended use.” Final Act. 4. Appellants
argue that “Ford is not relevant to the present technology,” but, rather,
“concerns a ‘composite’ of carbon nanotubes and carbonate particles.”
Appeal Br. 8; see also Reply Br. 2 (asserting that “Ford . . . concerns an
entirely different and non-analogous art”). According to Appellants, “[tjhere
exists no motivation to look to the nanotube/carbonate ‘composite’ of Ford
for nanoparticles to use in a fiber/resin composite, as Ford has no relevance
to fiber/resin composites.” Appeal Br. 8. We find this argument persuasive.
The established precedent of our reviewing court sets up a two-fold
test for determining whether art is analogous: “. . . ‘(1) whether the art is
from the same field of endeavor, regardless of the problem addressed and,
(2) if the reference is not within the field of the inventor’s endeavor, whether
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved.”’ In re Klein, 647 F.3d 1343, 1348 (Fed.
Cir. 2011) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). The
first part of the test asks if the structure and function of the prior art is such
that it would be considered by a person of ordinary skill in the art because of
the similarity to the structure and function of the claimed invention as
disclosed in the application. Bigio, 381 F.3d at 1325—27. Under the second
part of the test, “[a] reference is reasonably pertinent if, even though it may
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Application 13/154,615
be in a different field from that of the inventor’s endeavor, it is one which,
because of the matter with which it deals, logically would have commended
itself to an inventor’s attention in considering his problem.” In re Clay, 966
F.2d 656, 659 (Fed. Cir. 1992).
Here, the Examiner has not made any findings with respect to the
applicable field of endeavor, the problem addressed by the application, or
whether the references are reasonably pertinent thereto. In response to
Appellants’ argument, the Examiner states “that a reference may be relied
upon for all that it would have reasonably suggested to one having ordinary
skill the art.” Ans. 4. However, this response does not explain how Ford is
from Appellants’ field of endeavor or reasonably pertinent to the particular
problem with which Appellants were concerned.
In particular, Ford “relates to a carbon nanotube composite material,
to methods of its production and to uses of such composite material.” Ford
11. Ford describes that carbon nanotube-containing composites have
applications in the biomedical field (e.g., “bone or tooth replacements” or
“for the surface treatment of medical implants”) and in the field of electronic
devices (e.g., “field emission displays . . . and field effect transistors”). Id.
4—5. Although Ford broadly relates to composite materials, it is not
readily apparent how Ford’s disclosure relates to Appellants’ field of
endeavor (i.e., pressure vessels made using fiber-reinforced composites).
See Spec. 11 (describing that Appellants’ “disclosure relates to pressure
vessels, e.g., pipes and tanks, made using fiber composites”); see also claim
1 (specifically directed to “[a] pressure vessel comprising a wall. . . [that]
comprises a composite layer comprising a resin system impregnated with
fibers and a plurality of surface-modified nanoparticles”). The Examiner
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Application 13/154,615
makes no findings that Ford’s carbon nanotube-containing composite
material or the applications therefor discussed in paragraphs 4 and 5 of Ford
have any similarity in structure or function to the pressure vessels described
and claimed in Appellants’ application.
Further, the Specification describes that Appellants were concerned
with the problem of reducing weight and improving strength in fiber-
reinforced composite pressure vessels. See Spec. 13 (describing that
“greater reductions in weight and improvements in strength are desired”); id.
126 (describing that “the use of matrix resins containing surface modified
nanoparticles can provide significant increases in burst strength without
increasing the fiber content of a pressure vessel design”). In this regard, we
fail to see how Ford, which is concerned with providing “carbon nanotube
composites that are easy to prepare and mimic the structure of naturally
occurring organic-ceramic composites” (Ford 19), is reasonably pertinent to
the problem facing Appellants. The Examiner has not presented evidence to
show that a person of ordinary skill in the art seeking to reduce weight and
improve strength in fiber-reinforced composite pressure vessels would look
to Ford’s carbon nanotube-containing composite material for making such
pressure vessels. Accordingly, we find insufficient evidence to support a
finding that a disclosure for carbon nanotube-containing composites would
have logically commended itself to Appellants’ attention in considering the
problem of how to provide greater reductions in weight and improvements in
strength when constructing a pressure vessel from fiber-reinforced
composites. As such, Ford fails to satisfy either of the two tests for
analogous art.
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Appeal 2016-005789
Application 13/154,615
For the foregoing reasons, we find that Ford is not analogous art.
Accordingly, we do not sustain the rejection of independent claim 1, and
claims 2-4, 7—9, and 13—19 which depend therefrom, under 35 U.S.C.
§ 103(a) as unpatentable over DeLay, Goetz, and Ford.
Rejections II and III
The Examiner’s rejections of claims 5, 6, and 20—22 rely on the same
proposed combination of DeLay, Goetz, and Ford that we find deficient for
the reasons stated above. Final Act. 6—7. The Examiner does not make any
findings as to the scope and content of Carter or Goenner that would cure the
deficiency in the underlying combination of DeLay, Goetz, and Ford.
Accordingly, for the reasons discussed above, we do not sustain the
Examiner’s rejections, under 35 U.S.C. § 103(a), of: claims 5 and 6 as
unpatentable over DeLay, Goetz, Ford, and Carter; and claims 20-22 as
unpatentable over DeLay, Goetz, Ford, and Goenner.
DECISION
The Examiner’s decision to reject claims 1—9 and 13—22 under
35 U.S.C. § 103(a) is reversed.
REVERSED
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