Ex Parte Yajima et al

Patent Trials and Appeals Board

Feb 28, 2019

13514411 - (D) (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/514,411 06/07/2012
23117 7590 03/04/2019
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Takeru Yajima
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.
GPK-427-275 7536
EXAMINER
YOUNG, WILLIAM D
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte T AKERU Y AJIMA,
HIDETOSHI OHTA, and NORIHIRO NOSE
Appeal2018-001213
Application 13/514,411
Technology Center 1700
Before BEYERL YA. FRANKLIN, GEORGE C. BEST, and LILAN REN,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 2, 6, 8, 22, and 24--26 of
Application 13/514,411 under 35 U.S.C. § 103(a) as obvious. Final Act.
(October 3, 2016). Appellants 1 seek reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.
1 Taiyo Nippon Sanso Corp. is identified as the real party in interest. Appeal
Br. 3.
Appeal2018-001213
Application 13/514,411
BACKGROUND
The '411 Application describes a composite resin material. Spec. ,r 1.
In particular, the Specification describes a flooring-based resin that has been
rendered conductive by adding a conductive nano-material to the resin.
Id. ,I,I 3---6.
Claim 1 is representative of the '411 Application's claims and is
reproduced below from the Claims Appendix.
1. A composite resin material particle which is formed by a
resin material particle that is a material for producing a resin
molding product and a conductive nano-material, comprising:
a resin-only region that is solely composed of a resin
material of the resin material particle; and
a dispersion mixing layer which is obtained by
dispersedly mixing the conductive nano-material from a swface
of the resin material particle to an inside of the resin material
particle, wherein
the resin-only region is present in the inside of the
composite resin material particle and 60% or higher of a surface
of the resin-only region is enclosed by the dispersion mixing
layer,
the dispersion mixing layer is formed over all of the
surface or at least a part of the surface of the resin-only region,
the conductive nano-material is dispersedly mixed within
the resin material of the resin material particle in the dispersion
mixing layer,
the dispersion mixing layer forms a conductive layer,
the mixed thickness of the dispersion mixing layer is
from 0.1 µm to 1 µm,
the conductive nano-material within the dispersion
mixing layer has a shape with an outer diameter of 150 nm or
smaller and a length of 500 nm or longer,
2
Appeal2018-001213
Application 13/514,411
the dispersion mixing layer includes a conductive net that
is composed of the conductive nano-materials,
the resin material is polytetrafluoroethylene, and
the conductive nano-material is one or more selected
from the group consisting of a carbon nanotube, a carbon
nanofiber, a carbon nanocoil, a carbon nanotwist, a carbon
nanohom, a metal nanoplate, a metal nanorod, and a metal
nanowire.
Appeal Br. 24--25 ( emphasis added).
REJECTION
On appeal, the Examiner maintains the following rejection:
1. Claims 1, 2, 6, 8, 22, and 24--26 are rejected under 35 U.S.C.
§ 103 (a) as unpatentable over the combination of Siegel, 2
Nakamura, 3 and Chen. 4 Final Act. 3.
DISCUSSION
The Examiner found that Siegel describes a composite resin particle
comprising a fluoropolymer resin particle having carbon nanotubes
embedded in its surface layer. Final Act. 3. The Examiner also found that
Siegel's carbon nanotubes have an aspect ratio that overlaps with the range
of aspect ratios set forth in claim 1. Id. The Examiner relies upon
Nakamura to describe the thickness of the surface mixing layer. Id. The
Examiner found that Nakamura describes a composite resin particle having a
shell layer of conductive particles embedded in the resin material. Id. at 3-
2 US 2007/0199729 Al, published August 30, 2007.
3 US 5,403,873, issued April 4, 1995.
4 US 2007/0265379 Al, published November 15, 2007.
3
Appeal2018-001213
Application 13/514,411
4. The Examiner found that Nakamura's shell layer has a thickness between
0.01 µm up to 10 µm. Id. The Examiner relies upon Chen for teaching the
use of PTFE as the fluoropolymer in Siegel's resin particle. Id. at 4.
Claim 1, the only independent claim on appeal, requires the presence
of "a dispersion mixing layer which is obtained by dispersedly mixing the
conductive nano-material from a surface of the resin material particle to an
inside of the resin material particle." As discussed above, the Examiner
relies upon Nakamura as describing the thickness of the claimed dispersion
mixing layer. Final Act. 3--4. This reliance is misplaced because Nakamura
art does not describe a dispersion mixing layer. Rather, Nakamura describes
resin particles coated with electrically conductive fine particles. See
Nakamura Abstract, 3:37-50, 7:26-47. Nakamura describes its coating as
being adhered to the resin particles, not mixed with the resin itself. Id. at
2:15-22. Accordingly, the Examiner erred by finding that Nakamura
describes or suggests the recited dispersion mixing layer thickness.
CONCLUSION
For the reasons set forth above, we reverse the Examiner's rejection of
claims 1, 2, 6, 8, 22, and 24--26.
REVERSED
4