Ex Parte Zabetakis et al

Board of Patent Appeals and Interferences

Sep 27, 2010

10956593 (B.P.A.I. Sep. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DAN ZABETAKIS,
PAUL SCHOEN, and
MIKE A. DINDERMAN
__________

Appeal 2009-014150
Application 10/956,593
Technology Center 1700
___________

Before MICHAEL P. COLAIANNI, ADRIENE LEPIANE HANLON, and
MARK NAGUMO, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-014150
Application 10/956,593

A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
finally rejecting claims 1-3, 6, 7, and 9-11, all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The subject matter on appeal is directed to an electrically non-
conductive composite product capable of absorbing electromagnetic
radiation. The composite product comprises an electrically non-conducting
matrix and electrically conducting metallized cellulose fibers loaded into the
matrix at about 1-12% by volume. The composite product has a DC
electrical conductivity of less than or equal to about 35 x 10-10 (Ωm)-1, which
according to the Appellants, is electrically non-conductive. Spec. 9:14-16.
Claim 7, reproduced below, is illustrative.
7. A lightweight electrically non-conductive composite
product capable of absorbing electromagnetic radiation
comprising:

an electrically non-conducting matrix material and

an electrically conducting metallized cellulose fibers
loaded into the non-conducting matrix material,

wherein the metallized cellulose fibers are loaded at
about 1-12% by volume of the metallized cellulose fibers on the
basis of combined weight of the metallized cellulose fibers and
said matrix material, forming a composite product having a DC
electrical conductivity of less than or equal to about
35 x 10-10 (Ωm)-1; and

wherein the average length of the cellulose fibers,
defined as the greatest distance between points on an individual
fiber, is about 300 microns or less.

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Appeal 2009-014150
Application 10/956,593

Appeal Brief dated November 19, 2008 (“App. Br.”), Claims Appendix.
The following Examiner’s rejections are before us on appeal:2
(1) Claims 1-3, 6, 7, and 9-11 are rejected under 35 U.S.C. § 112,
first paragraph, based on the enablement requirement.
(2) Claims 1-3, 7, and 9-11 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Petermann (US 4,783,279, issued
November 8, 1988) and EP 154 (EP 1,130,154 A2, published September 5,
2001).3
B. DISCUSSION
1. Rejection (1)
According to the Examiner, the Specification, as originally filed,
“refers to 0-12% by weight [of metallized fibers] in the figures 5A-5D, while
the figures themselves refer to 0-12% by volume.” Ans. 3. The Examiner
argues that “the person of skill would not be able to make the claimed
invention because they would not know how much fibers should be used.”
Ans. 3.
Despite any inconsistency between the Specification and the
drawings, claim 7 recites that “the metallized cellulose fibers are loaded at
about 1-12% by volume.” App. Br., Claims Appendix. Thus, one of
ordinary skill in the art would know that the claimed non-conductive

2 It appears that there is some confusion as to whether the Examiner also
rejected claims 1-3, 6, 7, and 9-11 under the written description requirement
of 35 U.S.C. § 112. See App. Br. 3, 4-5. However, the Examiner indicates
that “the final rejection does not include a separate 112 first paragraph
rejection for failing to comply with the written description requirement.”
Examiner’s Answer, dated January 30, 2009 (“Ans.”), at 2.
3 The Examiner also includes claim 8 in the statement of this rejection. Ans.
3. Claim 8 was cancelled in an amendment dated October 17, 2007.
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Appeal 2009-014150
Application 10/956,593

composite comprises “1-12% by volume of the metallized cellulose fibers.”
See App. Br. 4.
The Examiner has failed to direct us to any evidence establishing that
undue experimentation would be required to produce such a composite. In
re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Therefore, the § 112, first
paragraph, rejection based on the enablement requirement will be reversed.
2. Rejection (2)
The Appellants do not dispute that it would have been obvious to one
of ordinary skill in the art to replace the conductive fillers of Petermann with
the metal coated cellulose fibers of EP 154. Ans. 3-4; App. Br. 5. Instead,
the Appellants argue that combining the references in this manner would not
result in a non-conductive composite as claimed, i.e., a composite having a
DC electrical conductivity of “less than or equal to about 35 x 10-10 (Ωm)-1.”
App. Br. 5-6.
The Appellants’ position is supported by the record. According to
Petermann, the disclosed compositions are conductive. See, e.g., Petermann
1:19-27 (disclosed invention “relates to electrically conductive bulk,
granular, sheet, coating or nodular molding compositions”). Thus, one of
ordinary skill in the art, following the teachings of Petermann, would have
replaced the conductive fillers of Petermann with the conductive fibers of EP
154 in an amount that results in a conductive composite rather than a non-
conductive composite as claimed. For this reason, the § 103(a) will be
reversed.
C. DECISION
The decision of the Examiner is reversed.

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Appeal 2009-014150
Application 10/956,593

REVERSED

tc

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