Panasonic Intellectual Property Management Co., Ltd.

Patent Trials and Appeals Board

Jul 22, 2021

2020002583 (P.T.A.B. Jul. 22, 2021)

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.
15/206,262 07/09/2016 Naomi NISHIKI P0460678US01K 1233
42212 7590 07/22/2021
Panasonic IP Management Co., Ltd.
IP Management Department, Applications Promotion
7F OBP Panasonic Tower, 2-1-61 Shiromi, Chuo-ku,
Osaka, 540-6207
JAPAN
EXAMINER
GUO, TONG
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
07/22/2021 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):
admin@culpepperip.com
ppc.docket@ml.jp.panasonic.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NAOMI NISHIKI,
KAZUHIRO NISHIKAWA, HIDETOSHI KITAURA,
ATSUSHI TANAKA, and KIMIAKI NAKAYA
____________

Appeal 2020-002583
Application 15/206,262
Technology Center 1700
____________

Before GEORGE C. BEST, BRIAN D. RANGE, and
LILAN REN, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant1 seeks rehearing of our March 30, 2021 Decision. Ex parte
Nishiki, No. 2020-002583, 2021 WL 1232956 (PTAB March 30, 2021). In
that Decision, we affirmed the final rejection of claims 1, 3, and 4 of
Application 15/206,262.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
has identified Panasonic Intellectual Property Management Co., Ltd. as the
real party in interest. Appeal Br. 3 (September 9, 2019).
Appeal 2020-002583
Application 15/206,262
2
Appellant also seeks, for the first time, to argue that the Board does
not have authority to issue its decision, citing Arthrex, Inc. v. Smith &
Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) (“Arthrex I”).
For the reasons set forth below, we grant Appellant’s request for
rehearing. On rehearing, we agree with Appellant that the Decision
constitutes a new ground of rejection. After consideration of Appellant’s
arguments, we continue to affirm the Examiner’s rejection of claims 1, 3,
and 4 of the ’262 Application. We do not act upon Appellant’s objection to
the Board’s authority because Appellant does not specify what form of relief
it is seeking from us.
DISCUSSION
In this request for rehearing, Appellant is charged with stating the
points believed to have been misapprehended or overlooked by the Board.
37 C.F.R. § 41.52 (2019). We review the points of the decision contested by
Appellant and determine whether we made an error in fact finding or
applying the law, and further determine whether any error changes the
outcome of the Decision when viewing all the evidence and arguments anew
in light of the preponderance of the evidence standard. In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992) (“patentability is determined on the totality
of the record, by a preponderance of evidence with due consideration to
persuasiveness of argument”); Gardner v. TEC Sys., Inc., 725 F.2d 1338,
1344 (Fed. Cir. 1984) (any error concerning nonessential facts is harmless
and not a basis for reversal). We do not give our original Decision any
deference.
Appellant’s Petition raises three issues: (1) Appellant argues that our
affirmance of the Examiner should have been designated as setting forth a
Appeal 2020-002583
Application 15/206,262
3
New Ground of Rejection, (2) Appellant argues that our affirmance
misapprehends the content of the prior art, and (3) Appellant, for the first
time, argues that the Board does not have the authority to issue its decision.
Reh’g Req. 3–7. We address these arguments in turn.
A. New Ground of Rejection
The Examiner rejected claims 1, 3, 4 of the ’262 Application (1) as
anticipated by Murakami2 as evidenced by Nishikawa3 and (2) as
unpatentable over Murakami as evidenced by Nishikawa. Final Act. 3. In
our Decision, we affirmed the Examiner’s rejections. 2021 WL 1232956
at*3.
Appellant argues that our Decision includes a new ground of rejection
that was not designated as such. Reh’g Req. 3 – 5. In particular, Appellant
argues that the Decision’s reliance upon Murakami’s Example 4 departs
from the analysis relied upon by the Examiner in rejecting claims 1, 3, 4 of
the ’262 Application. Id. According to Appellant, this reliance means that
the Decision’s affirmance of the Examiner’s rejections constitutes a new
ground of rejection.
“Mere reliance by the Board on the same type of rejection or the same
prior art references relied upon by the examiner, alone, is insufficient to
avoid a new ground of rejection where it propounds new facts and rationales
to advance a rejection—none of which were previously raised by the
examiner.” In re Stepan Co., 660 F.3d 1341, 1345 (Fed. Cir. 2011).

2 US 4,954,193, issued September 4, 1990.
3 US 2010/0062220 A1, published March 11, 2010.
Appeal 2020-002583
Application 15/206,262
4
After reviewing the Examiner’s Final Action and the Decision, we
determine that Appellant is correct. Accordingly we grant Appellant’s
Request for Rehearing.
B. Decision on Rehearing
In a Request for Rehearing, Appellant must identify legal or factual
points overlooked or misapprehended by the Board in its opinion. 37 C.F.R.
§ 41.52. In this case, Appellant argues that the Decision misinterpreted the
process used in Murakami’s Example 4. Reh’g Req. 5 – 7. After further
review, we agree with Appellant. We, therefore, withdraw our previous
decision.
Because we have granted Appellant’s Request for Rehearing, we
consider anew the propriety of the Examiner’s Rejections in view of the
arguments presented by Appellant. After consideration of Appellant’s appeal
Brief, Reply Brief, and Request for Rehearing, we affirm the rejection of
claims 1, 3, and 4 of the ’262 Application.4
On appeal, Appellant stipulates the claims 3 and 4 — which depend
from claim 1 — will stand or fall with claim 1. Appeal Br. 9, 12.
Accordingly, we limit our discussion to claim 1.
In rejecting claim 1, the Examiner found that Murakami describes a
process for making a graphite plate that uses the same materials and subjects

4 Appellant asks us to consider a new declaration submitted with the
Rehearing Request. Reh’g Req. 6. Affidavits or other evidence filed after the
date of filing an appeal will not be admitted to the record except as permitted
by 37 C.F.R. §§ 41.33(d)(1), 41.39(b)(1), 41.50(a)(2)(i), or 41.50(b)(1). 37
C.F.R. § 41.33(d). None of these exceptions apply in this case, and we have
not considered the new declaration.
Appeal 2020-002583
Application 15/206,262
5
them to the same processes as described in the ’262 Application. Final Act. 3
– 5. Based on this finding, the Examiner finds that the graphite film
produced by Murakami’s method will meet the surface roughness and
surface-unevenness variation limitations of claim 1. Id. at 5; see also In re
Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and
prior art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product.”).
Appellant argues that the Examiner erred by finding that the ’262
Application’s method and materials are the same as those described in
Murakami. Appeal Br. 10 – 12.
We do not find Appellant’s arguments to be persuasive.
Appellant describes its method for making graphite plates with the
surface properties recited in claim 1 as follows:
(1) a polymer film made from a polymer containing a benzene ring
such as a polyimide or polyoxadiazole is used as a starting
material, Spec. 5,
(2) the polymer film is placed inside a heat-resistant vessel that has
a heat resistance of 3200°C or higher, id. at 3,
(3) under an inert atmosphere, the polymer film is heated to
1000°C to eliminate oxygen, nitrogen, and hydrogen from the
polymer material, id. at 13,
(4) optionally, the temperature of the polymer film may be
decreased to room temperature, id. at 8, and
(5) the polymer film is heated to a temperature between 2400°C
and 3200°C while the pressure of 10 kg/cm² to 100 kg/cm² is
applied in the vertical direction, id. at 7.
Appeal 2020-002583
Application 15/206,262
6
Murakami describes its method for making graphite as follows:
(1) a polymer film selected from a polyoxadiazole, and aromatic
polyimide, and an aromatic polyimide is used as a starting
material, Murakami 4:44 – 47,
(2) the polymer films is placed inside a heat resistant vessel, such
as between two quartz plates, id. 10:33 – 35,
(3) the film is pre-treated by heating to 1000°C or lower, id. 7:32 –
37,
(4) the film is then thermally treated at a temperature not lower
than 2200°C, id. 7:47 – 50, and
(5) the thermally treated films are then hot pressed at, for example,
2600°C at a pressure of 20 kg/cm², id. 8:31 – 37.
As can be seen, the processes described in the ’262 Application and
Murakami are substantially the same. It has long been the law that under
such circumstances, the Examiner can assume that the product produced by
a process that is substantially identical to the process used to produce the
claimed product inherently has the same properties as the claimed product.
In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986); In re Best, 562 F.2d 1252,
1255 (CCPA 1977). The Examiner, therefore, correctly determined that
Appellant had the burden of demonstrating that Murakami’s product does
not have the surface properties recited in claim 1.
Appellant presents three arguments for reversal of the rejection of
claim 1. We address these arguments in turn.
First, Appellant argues that Murakami’s process is a substantial
difference. Appeal Br. 11 – 12. This argument is not persuasive because
Appellant does not explain how or why Murakami’s thermal pretreatment
step results in a product that is substantially different from the product of the
’262 Application’s process.
Appeal 2020-002583
Application 15/206,262
7
Second, Appellant argues that the raw material for the manufacturing
method described in the ’262 Application is polyimide. Appeal Br. 12.
According to Appellant, Murakami’s only example using polyimide starting
material uses a process that differs from that described in the ’262
Application’s Specification.
This argument is not persuasive because claim 1 is not limited to a
graphite plate produced from polyimide. The ’262 Application’s
Specification more broadly discloses potential starting materials. See Spec.
5. However, neither the disclosure of the Specification nor the prior art is
limited to the specific working examples. In this case, both the Specification
and the prior art state that polyoxadiazole film and aromatic polyimide films
can be used as a starting materials. In view of this broad disclosure, we will
not read limitations from preferred embodiments into the claims.
Third, Appellant argues that the Examiner’s finding that Murakami’s
graphite inherently has the claimed properties is improper because the
Examiner cited the ’262 Application’s Specification as evidence of the
inherency. Appeal Br. 10.
This argument is not persuasive. While we agree with Appellant that
Murakami does not expressly describe its graphite as having the claimed
surface roughness and surface-unevenness variation, there is nothing
improper the finding that Murakami’s graphite inherently has the recited
properties. Appellant’s argument amounts to an attack on the logic
underlying the holding in Best. Such attacks are destined to fail at the Board
because we lack the power to overturn Best. Nor would we want to. The
burden shift authorized in Best represents sound public policy and a sensible
allocation of burdens. As the Court explained in Best, the “fairness [of this
policy] is evidenced by the PTO’s inability to manufacture products or to
Appeal 2020-002583
Application 15/206,262
8
obtain and compare prior art products.” Best, 562 F.2d at 1255 (citing In re
Brown, 459 F.2d 531, 535 (CCPA 1972) (“As a practical matter, the Patent
Office is not equipped to manufacture products by the myriad of processes
put before it and then obtain prior art products and make physical
comparisons therewith.”)).
For the reasons set forth above, we affirm the Examiner’s rejection of
claims 1, 3, and 4 as anticipated by Murakami or, in the alternative, as
obvious over Murakami. Moreover, we do so without citing or relying upon
the details of Murakami’s Example 4.
C. Arthrex Objection
The Request for Rehearing states:
The Appellant respectfully submits that the Board did not
have authority to issue its decision because (1) the Board did
not include principal officers appointed by the President with
the Senate’s advice and consent, or inferior Officers whose
appointment Congress has permissibly vested in a department
head; or (2) the Court of Appeals fail to cure this defect by
severing the application of 5 U.S.C. § 7513(a) to those judges.
Reh’g Req. 7 (citing Arthrex I, 941 F.3d at 1355).
We cannot act on this objection because Appellant neither specifies
what relief it wants us to grant nor points to any statutory or regulatory grant
of authority to us to respond to the objection. Furthermore, the Supreme
Court has since vacated the Federal Circuit’s decision in Arthrex I, thereby
mooting Appellant’s second ground of objection. Arthrex II, 2021 WL
2519433 at *13.
Appeal 2020-002583
Application 15/206,262
9
CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Rehearing
Granted
1, 3, 4 102(a)(1) Murakami, Nishikawa 1, 3, 4 1, 3, 4
1, 3, 4 103 Murakami, Nishikawa 1, 3, 4 1, 3, 4
Overall
Outcome
1, 3, 4
Status of claims after rehearing request:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 4 102(a)(1) Murakami, Nishikawa 1, 3, 4
1,3,4 103 Murakami, Nishikawa 1, 3, 4
Overall Outcome 1, 3, 4
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REHEARING GRANTED; AFFIRMED