Tsinghua University et al.

Patent Trials and Appeals Board

Aug 27, 2020

2019006408 (P.T.A.B. Aug. 27, 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.
15/798,730 10/31/2017 HONG-YING FU US62157 9824
54000 7590 08/27/2020
ScienBiziP, PC
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Suite 2825
Los Angeles, CA 90071
EXAMINER
AUER, LAURA A
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
08/27/2020 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):
eoa-cbd@scienbizip.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HONG-TING FU and WEN-ZHEN LI
____________

Appeal 2019 -006408
Application 15/798,730
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, N. WHITNEY WILSON, and
DEBRA L. DENNETT, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
December 4, 2018 decision finally rejecting claims 1 and 3–10 (“Final
Act.”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Tsinghua University and Hon Hai
Precision Inc., Co. Ltd. as the real parties in interest (Appeal Br. 2).
Appeal 2019-006408
Application 15/798,730

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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to a composite structure which
comprises a porous metal structure and a carbon nanotube structure –
comprising a plurality of carbon nanotubes – which is fixed on a surface of
the porous metal structure (Abstract). The porous metal structure and the
carbon nanotube structure are shrunk together to form a plurality of wrinkled
parts (id.). Details of the claimed invention are described in claim 1, which
is reproduced below from the Claims Appendix of the Appeal Brief:
1. A composite structure with porous metal comprising:
a porous metal structure; and
a carbon nanotube structure comprising a plurality of
carbon nanotubes, the carbon nanotube structure is fixed on a
surface of the porous metal structure, wherein the porous metal
structure and the carbon nanotube structure are shrunk together
to form a plurality of wrinkled parts.

REJECTIONS
1. Claims 1 and 3–6 are rejected under 35 U.S.C. § 103 as
unpatentable over Farquhar2 in view of Lin.3
2. Claims 7–9 are rejected under 35 U.S.C. § 103 as unpatentable
over Farquhar and Lin, and further in view of Miller.4
3. Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable
over Farquhar and Lin, and further in view of Wei.5

2 Farquhar et al., US 2017/0145561 A1, published May 25, 2017.
3 Lin et al., US 2017/0232725 A1, published August 17, 2017.
4 Miller et al., US 2014/0151288 A1, published June 5, 2014.
5 Wei et al., US 2016/0159651 A1, published June 9, 2016.
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Application 15/798,730

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DISCUSSION
Appellant does not argue any of the claims separately (Appeal Br. 10).
Accordingly, our analysis will focus on the rejection of claim 1 over
Farquhar in view of Lin.
The Examiner finds that Farquhar discloses a graphene-metal
composite comprising a porous metal foam substrate and a graphene layer
deposited on the porous metal foam substrate by growing carbon nanotubes
on the surface before compressing, where the multilayered porous metal
foam substrate is compressed (Final Act. 3, citing Farquhar Abstract, claim
6). The Examiner also finds that Farquhar does not disclose that the metal
structure and the nanotubes are shrunk together to form a plurality of
wrinkled parts (Final Act. 3).
The Examiner also finds that Lin discloses wrinkled metal films for
applications in electronics such as wearable devices, strain sensors, and
capacitive sensors (Final Act. 3, citing Lin, Abstract). The Examiner finds
that Lin discloses that the wrinkled metal thin films are fabricated by
thermally shrinking shape-memory polymers patterned with metal, eliciting
a stiffness mismatch and causing the metal film to buckle and form wrinkles,
and that the thin profiles and flexibility make them more capable of
conforming to the skin (Final Act. 3, citing Lin, ¶4).
The Examiner determines that it would have been obvious “for the
compressing step of Farquhar to alternatively comprise shrinking the metal
composite in order to form a wrinkled surface useful for applications in
electronics such as wearable devices, strain sensors, and capacitive sensors”
(Final Act. 4).
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Appellant argues that Farquhar achieves increased conductivity of its
graphene-metal composite by closing voids in the composite by compression
and creating “an electrical super highway” (Appeal Br. 6, citing Farquhar, ¶¶
33 and 40). Thus, according to Appellant, the compression step taught by
Farquhar increases the density of the composite and changes its internal
structure (Appeal Br. 6). Appellant further argues that in Lin’s system the
shape of the thin metal films is changed by the shrinkage, but the internal
structures of the thin metal films are not changed (Appeal Br. 6–7).
Appellant illustrates these arguments using the following figures:

Appellant’s Figures 1 and 2 illustrate its argument about the different effects
of Farquhar’s compression step and Lin’s shrinking step.

Appellant argues that a person of ordinary skill in the art would not
have substituted Lin’s shrinkage step for Farquhar’s compression step
because the shrinkage step does not change the internal structure of Lin’s
composition, and thus would not close Farquhar’s internal voids and create
the electrical superhighway sought by Farquhar.
This argument is not persuasive, essentially for the reasons set forth
by the Examiner at page 4 of the Answer. In particular, the Examiner finds
that Lin teaches that its thin film is shrunken, not merely wrinkled (Ans.4,
citing Lin ¶ 4). A person of skill in the art would have understood that
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Application 15/798,730

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“shrink” means a reduction in size, not merely a change in shape. If the
overall size of the film is smaller, it would have suggested to a person of
skill in the art that voids in the film would also be smaller, as required in
Farquhar’s composition.
Appellant also argues that the shrinkage described by Lin applies to
the aspect ratio of its wrinkles (Appeal Br. 7–8, citing Lin, ¶ 6). However,
while Lin does explain that the shrinkage does produce higher aspect ratio
wrinkles, Lin explicitly states that it is the film itself which is shrunk by
amounts greater than 300% (Lin, ¶6).
Appellant further argues that Lin’s composition is thousands of times
thinner than Farquhar’s composition and, therefore, a person of skill in the
art would not have expected that a process which shrinks Lin’s metal films
would be able to compress Farquhar’s metal foam and close its internal
voids (Appeal Br. 9–10). This argument is persuasive. The Examiner has
not provided persuasive evidence that a person of skill in the art would have
expected that the forces provided by Lin’s shape memory polymers to shrink
and wrinkle Lin’s thin metal films would have been sufficient to compress
Farquhar’s (relatively) thick graphene-metal composites.
Accordingly, we reverse the rejections.

Appeal 2019-006408
Application 15/798,730

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–6 103 Farquhar, Lin 1, 3–6
7–9 103 Farquhar, Lin,
Miller
7–9
10 103 Farquhar, Lin, Wei 10
Overall
Outcome
1, 3–10

REVERSED