Ex Parte Yadav et al

Board of Patent Appeals and Interferences

Aug 16, 2012

10435222 (B.P.A.I. Aug. 16, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/435,222 05/09/2003 Tapesh Yadav 037768-0160 9361
24959 7590 08/17/2012
PPG INDUSTRIES INC
INTELLECTUAL PROPERTY DEPT
ONE PPG PLACE
PITTSBURGH, PA 15272
EXAMINER
YOON, TAE H
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
08/17/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte TAPESH YADAV, CLAYTON KOSTELECKY,
EVAN FRANKE, BIJAN MIREMADI, MING AU, and
ANTHONY VIGLIOTTI
________________

Appeal 2011-001997
Application 10/435,222
Technology Center 1700
________________

Before EDWARD C. KIMLIN, PETER F. KRATZ, and
MARK NAGUMO, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 21-25, 27-29, 35,
37-41, 43-46, 50-53, 55, 56, 65, and 66. We have jurisdiction under 35
U.S.C. § 6(b).
Claim 21 is illustrative:
21. A method for preparing a thermal nanocomposite comprising:

processing a nanocomposite mixture to form a thermal nanocomposite
comprising less than or equal to 80% nanofillers by volume in a solid
polymer matrix, having a connectivity of nanofillers in 1, 2, and/or 3
dimensions, and having a thermal conductivity that differs by more than
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Application 10/435,222

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20% as compared with the thermal conductivity exhibited by a composite
material of a similar composition with filler particles having a domain size
of 1 micron,

the nanocomposite mixture comprising:

nanofillers comprising surface treated nanoparticles and having
a domain size equal to or less than the mean free path of phonons,
wherein the nanofillers comprise a composition selected from the
group consisting of carbides, nitrides, borides, phosphides, and
silicides, with the proviso that the nanofillers do not comprise oxygen;
and

a polymer matrix.

The Examiner relies upon the following reference in the rejection of
the appealed claims (Ans. 3):
Strutt 6,025,034 Feb. 15, 2000

Appellants’ claimed invention is directed to a method for preparing a
thermal nanocomposite. The process entails processing a nanocomposite
mixture comprising less than or equal to 80% nanofillers by volume in a
solid polymer matrix which has a thermal conductivity that differs by more
than 20% as compared with the thermal conductivity of a similar
composition with filler particles having a domain size of 1 micron. The
nanocomposite mixture comprises surface treated nanoparticles having a
domain size equal to or less than the mean free path of phonons and a
polymer matrix.
Appealed claims 21-25, 27-29, 35, 37-41, 43-46, 50-53, 55, 56, 65,
and 66 stand rejected under 35 U.S.C. § 112, first paragraph, enablement
requirement. Claims 21-25, 27-29, 35, 37-41, 43-46, 50-53, 55, and 56
stand rejected under 35 U.S.C. § 112, second paragraph. All the appealed
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Application 10/435,222

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claims also stand rejected under 35 U.S.C. § 102(e) as anticipated by or, in
the alternative, under 35 U.S.C. § 103(a) as being unpatentable over Strutt.
In addition, all the appealed claims stand provisionally rejected on the
ground of nonstatutory obviousness-type double patenting over claims of
copending applications U.S. Application Nos. 12/081,115 and 11/808,766.
We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner. In doing so, we find ourselves in agreement
with Appellants that the Examiner’s rejections under § 112, first and second
paragraphs, and §§ 102/103 are not sustainable. We will sustain the
Examiner’s provisional rejection under obviousness-type double patenting
over the claims of copending U.S. Application No.11/808,766 inasmuch as
Appellants have not substantively rebutted the Examiner’s position and the
copending application has issued as U.S. Patent No. 8,130,114 on March 06,
2012.1 The obviousness-type double patenting rejection over the claims of
copending U.S. Application No. 12/808,766 is dismissed as moot because
this copending application is now abandoned, according to PTO records.
We consider first the Examiner’s rejection under § 112, first
paragraph, enablement requirement. It is the Examiner’s position that the
breadth of the appealed claims, including nanocomposite mixtures wherein
the nanofillers may be present in an amount of 0.1% by volume, is not
enabled by the present Specification. According to the Examiner, there is no
evidence in the present Specification that a nanofiller loading a 0.1% volume

1
 Appellants comments about copending application U.S. Serial No.
11/808,766 having an earlier filing date (App. Br. 35) do not establish that
the Examiner erred in rejecting the appealed claims present in this
application under the grounds of provisional obviousness type double
patenting over the now issued claims of the copending application.   
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Application 10/435,222

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would yield the claimed thermal conductivity difference, and that it would
require undue experimentation by one of ordinary skill in the art to
determine which concentrations of the claimed nanofiller would produce the
recited difference in thermal conductivity. However, we agree with
Appellants that the present Specification, which exemplifies nanofiller
concentrations of 15%, 20%, 50% and 80%, reasonably enables one of
ordinary skill in the art to process a nanocomposite mixture comprising less
than or equal to 80% nanofillers by volume in a solid polymer matrix. It
must be borne in mind that it is not the function of the claims to exclude
every possible inoperable embodiment. In re Dinh-Nguyen, 492 F.2d 856,
858-59 (CCPA 1974); In re Kamal, 398 F.2d 867, 872 (CCPA 1968); In re
Anderson, 471 F.2d 1237, 1242 (CCPA 1973). In the present case, any
concentration of nanofillers within the range of less than 80% by volume,
such as 0.1%, that does not yield the recited 20% difference in thermal
conductivity, is outside the scope of the appealed claims.
Turning to the rejection of the appealed claims under § 112, second
paragraph, it is the Examiner’s position that the claims are indefinite since
they omit the minimum amount of the nanofiller. However, as stated by
Appellants, the breadth of a claim is not to be equated with indefiniteness
under § 112, second paragraph. In re Miller, 441 F.2d 689, 693 (CCPA
1971). Also, as urged by Appellants, the present Specification teaches that
nanofiller loadings of 80% or less are preferred and that “[n]owhere does the
Specification indicate that there is a minimum nanofiller loading level
required in a solid polymer matrix to achieve the thermal conductivity
properties recited in the claims” (App. Br. 23, penultimate para.). We
concur with Appellants that “the recited method would not read on the
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Application 10/435,222

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preparation of a nanocomposite comprising 0.1% nanofillers by volume that
does not also have the recited connectivity feature” (Reply Br. 8, second
para.).
Concerning the rejection under §§ 102/103, we agree with Appellants
that Strutt does not describe within the meaning of § 102 surface treated
nanoparticles and coated nanoparticles as recited in claims 21 and 37,
respectively. The Examiner acknowledges as much but makes the erroneous
finding that the matrix or binder polymer of the reference meets the
requirement of a surface treatment and coating. However, we agree with
Appellants that the appealed claims recite “surface treated nanoparticles”,
and “coated nanoparticles”, as separate components from the recited
“polymer matrix”. The Examiner’s claim interpretation is not a reasonable
one when the claims are read in light of the Specification, and such an
interpretation would relegate the recited surface treated or coated
nanoparticles and “polymer matrix” as redundant.
Also, the Examiner has not set forth a rationale for why it would have
been obvious for one of ordinary skill in the art to surface treat or coat the
nanoparticles of Strutt. The Examiner errs in stating that “[t]he anticipation
rejection also would at least meet the obviousness rejection and a statement
with respect to the obviousness is not needed in the combined 102/103
rejection” (Ans. 16, second para.). When the § 102 rejection fails, as in the
present case, it is incumbent upon the Examiner to supply factual support for
the conclusion of obviousness under § 103. This is not a case where the
burden has been shifted to Appellants to establish a patentable distinction
between the nanoparticles claimed and the prior art such that the burden of
proof is essentially the same under § 102 or § 103.
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In conclusion, based on the foregoing, the Examiner’s rejections
under § 112, first and second paragraph, and under §§ 102/103 are reversed.
The Examiner’s rejection under obviousness-type double patenting over the
claims of copending U.S. Application No. 11/808,766 is sustained. The
Examiner’s provisional obviousness-type double patenting rejection over the
claims of copending U.S. Application No. 12/808,766 is dismissed as moot.
Accordingly, the Examiner’s decision rejecting the appealed claims is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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