Justin C. Lytle et al.

Patent Trials and Appeals Board

Jan 30, 2020

13784942 - (D) (P.T.A.B. Jan. 30, 2020)

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.
13/784,942 03/05/2013 Justin C. Lytle 099270-US3 3526
26384 7590 01/30/2020
NAVAL RESEARCH LABORATORY
ASSOCIATE COUNSEL (PATENTS)
CODE 1008.2
4555 OVERLOOK AVENUE, S.W.
WASHINGTON, DC 20375-5320
EXAMINER
GOLDEN, CHINESSA T
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
01/30/2020 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 PATENT TRIAL AND APPEAL BOARD
Ex parte JUSTIN C. LYTLE, JEFFREY W. LONG, AMANDA JUNE
BARROW, MATTHEW PAUL SAUNDERS, DEBRA R. ROLISON, and
JENNIFER L. DYSART
Appeal 2019-002660
Application 13/784,942
Technology Center 1700

Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
N. WHITNEY WILSON,
Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 4, and 6–16. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as the U.S.
Government as represented by the Secretary of the Navy. Appeal Br. 2.
Appeal 2019-002660
Application 13/784,942

2
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
1. A carbon nanofoam composite comprising:
a monolithic carbon foam of interconnected pores of ⁓ 50
- 300 nm in size with nanometric carbon walls having a
thickness on the order of 20 nm, in a condition of having been
made on carbon paper that has been plasma etched in the
presence of air and water vapor.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Pekala US 4,873,218 Oct. 10, 1989
Albert US 7,005,181 B2 Feb. 28, 2006
Rotermund US 2006/0014908 Al Jan. 19, 2006
Li (as translated) CN 101170137 A Apr. 30, 2008
REJECTIONS
1. Claims 1, 3, 4, 6, and 7 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Albert in view of Li.
2. Claims 8, 9, 11–14, and 16 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Albert in view of Li in further
view of Rotermund.
3. Claim 10 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Albert in view of Li in further view of Pekala.
4. Claim 15 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Albert in view of Li and Rotermund in further
view of Pekala.
Appeal 2019-002660
Application 13/784,942

3
OPINION
For purposes of this appeal, we note that none of the claims are
separately argued, and therefore we consider independent claim 1 as
representative. The remaining claims stand or fall with claim 1, consistent
with 37 C.F.R. § 41.37(c)(1)(iv) (2017).
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports the Examiner’s findings and conclusion that the subject matter of
Appellant’s claims is unpatentable over the applied art. Accordingly, we
sustain each of the Examiner’s rejections on appeal essentially for the
reasons set forth in the Final Office Action and in the Answer, and affirm.
We add the following analysis.
Rejection 1
We refer to pages 3–5 of the Answer regarding the Examiner’s
statement of Rejection 1. Therein, the Examiner relies upon Albert for
teaching the claimed elements except for the pore wall thickness on the
order of 20 nm. The Examiner relies upon Li for teaching this claimed
thickness. Ans. 3. With regard to the product by process limitation, the
Examiner states that the product itself does not depend on the process of
making it. Ans. 4.
We refer to Appellant’s arguments on pages 3–5 of the Appeal Brief.
Therein, Appellant first argues that the product-by-process limitation
distinguishes the claims over the references. Appeal Br. 3–4. We are
unpersuaded by this position for the following reasons.

Appeal 2019-002660
Application 13/784,942

4
Appellant states that the Declaration under 37 C.F.R. § 1.132
submitted on December 31, 2015 establishes that the claimed plasma etching
treatment of carbon paper in the presence of air and water vapor is critical to
obtaining certain desired characteristics of the foam. Appeal Br. 3.
Appellant also states that paragraph 6 of the Declaration, which refers to the
Lyle publication, shows that the plasma etching process is critical to
obtaining the claimed combination of pore size. Reply Br. 1–2. However,
paragraph 10 of the Declaration states a pore size “on the order of 100 nm
and greater”. This is not commensurate in scope with the independent claim
under consideration in this appeal. Furthermore, to the extent that the
process achieves the claimed pore size and wall thickness, the combination
of applied references meets this claim limitation as well. “Where a product-
by-process claim is rejected over a prior art product that appears to be
identical, although produced by a different process, the burden is upon the
applicants to come forward with evidence establishing an unobvious
difference between the claimed product and the prior art product.” In re
Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983); In re Thorpe, 777 F.2d 695, 697
(Fed. Cir. 1985) (“If the product in a product-by-process claim is the same as
or obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.”). It is one thing
to show that a process results in the claimed product, but another thing to
establish an unobvious difference between the claimed product and the prior
art product. As such, we are unpersuaded by this line of argument.
Appellant next argues that there is insufficient rationale for modifying
Albert as proposed by the Examiner. Appeal Br. 3–4. Appellant submits
that Albert’s process would tend to produce pores having a wall thickness
Appeal 2019-002660
Application 13/784,942

5
greater than that presently claimed, and that the cited portion of Li is silent
with regard to the relationship of wall thickness on the properties mentioned
in the rejection. Appeal Br. 4. We are unpersuaded by this line of argument
for the reasons expressed by the Examiner on pages 10–11 of the Answer.
Appellant next argues that the references are not enabling. Appeal Br.
4. Appellant submits that the references as applied do not describe how one
might obtain the claimed combination of pore size and wall thickness.
However, the party alleging non-enablement bears the burden of proving
non-enablement. In re Antor Media Corp., 689 F.3d 1282, 1288–89 (Fed.
Cir. 2012) (a publication is presumed to be enabling). In the instant case, an
argument made by counsel in a brief does not substitute for evidence lacking
in the record. Estee Lauder, Inc. v. L’Oréal, S.A., 129 F.3d 588, 595 (Fed.
Cir. 1997). It is noteworthy to mention that Li teaches, in paragraph [0015],
a pore size from 2–50 nm and a pore wall thickness of from 2–50 nm. Thus,
contrary to Appellant’s position, the applied prior art indicates that one of
ordinary skill in the art would have known how to obtain a pore size and
wall thickness as encompassed by claim 1.
Lastly, Appellant argues superior and unexpected results. Appeal Br.
4–5. We are unpersuaded by the rebuttal evidence as the Declaration is not
commensurate in scope with the claims as discussed, supra. Appellant can
rebut a prima facie case of obviousness by showing “unexpected results,”
i.e., showing that the claimed invention possesses a superior property or
advantage that a person of ordinary skill in the art would have found
surprising or unexpected. See In re Geisler, 116 F.3d 1465, 1469 (Fed.
Cir.1997) (quoting In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). However,
the burden rests with Appellants to establish, inter alia, (1) that the
Appeal 2019-002660
Application 13/784,942

6
comparisons are to the disclosure of the closest prior art, and (2) that the
supplied evidentiary showing is commensurate in scope with the claimed
subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Rejections 2–4
Appellant does not separately argue Rejections 2–4 (Appeal Br. 1–5),
so we affirm Rejections 2–4 for the same reasons that we affirm Rejection 1.
CONCLUSION
We affirm the Examiner’s decision.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 4, 6, 7 103 Albert, Li 1, 3, 4, 6, 7
8, 9, 11–14,
16
103 Albert, Li,
Rotermund
8, 9, 11–14,
16

10 103 Albert, Li, Pekala 10
15 103 Albert, Li,
Rotermund, Pekala
15
Overall
Outcome
1, 3, 4, 6–16

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED