AMOGREENTECH CO., LTD.

Patent Trials and Appeals Board

Jul 16, 2020

2019005489 (P.T.A.B. Jul. 16, 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.
14/611,518 02/02/2015 Seung Hoon LEE JLE0106USD 8758
23413 7590 07/16/2020
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
SANKS, SCHYLER S
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
07/16/2020 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SEUNG HOON LEE, YONG SIK JUNG, and YUN MI SO

Appeal 2019-005489
Application 14/611,518
Technology Center 3700
____________

Before BRETT C. MARTIN, MICHAEL J. FITZPATRICK, and
BARRY L. GROSSMAN, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, AMOGREENTECH CO., LTD.,1 appeals under 35 U.S.C.
§ 134(a) from the Examiner’s final decision rejecting claims 1, 2, and 4. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies itself as the sole real party in interest. Appeal Br. 3.
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STATEMENT OF THE CASE
The Specification
The Specification “relates to a heat radiation sheet that is mounted in
an electronic device, to thereby radiate heat generated from the inside of the
electronic device to the outside of the electronic device, and more
particularly, to a heat radiation sheet that is made in the form of a nano-web
form by way of an electrospinning method.” Spec. 1:11–14.
The Claims
Claims 1, 2, and 4 are rejected. Final Act. 1. No other claims are
pending. Id. Claim 1, the sole independent claim, is representative of the
claimed subject matter on appeal and is reproduced below.
1. A heat radiation sheet comprising:
a heat radiation layer that is formed in the form of a first
nano-web having a plurality of pores by electrospinning a
spinning solution, the first nano-web composed of first
nanofibers, the first nanofibers composed of a polymer material
and a first heat conductive material mixed with polymer
material, wherein the first heat conductive material is a plurality
of first heat conductive particles buried in the polymer material
and part of the plurality of the first heat conductive particles are
partially exposed on a surface of the first nanofibers;
an adhesive layer that is laminated on one surface of the
heat radiation layer, and that is formed in the form of a second
nano-web by electrospinning an adhesive material, the second
nano-web composed of second nanofibers, the second
nanofibers composed of an adhesive and a second heat
conductive material mixed with the adhesive, wherein the
second heat conductive material is a plurality of second heat
conductive particles buried in the adhesive and part of the
plurality of the second heat conductive particles are partially
exposed on a surface of the second nanofibers; and
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a plurality of third heat conductive particles dispersed
between the heat radiation layer and the adhesive layer, the
third heat conductive particles being dispersed separately from
the first and second heat conductive particles.
Appeal Br. 19.
The Examiner’s Rejections
The rejections before us are:
1. claims 1, 2, and 4 under 35 U.S.C. § 112 ¶2 as being indefinite
(Final Act. 2); and
2. claims 1, 2, and 4 under 35 U.S.C. § 103(a) as unpatentable
over Yarin,2 Tojo,3 and Hwang,4 as evidenced by Chen5 (id. at 3).
DISCUSSION
For each rejection, Appellant argues the patentability of all claims
together. Appeal Br. 9–11 (regarding Rejection 1), 12–17 (regarding
Rejection 2). We choose claim 1 as representative of all claims in deciding
each rejection. See 37 C.F.R. § 41.37(c)(1)(iv).
Rejection 1—Indefiniteness
The Examiner determined that claim 1 is indefinite due to its
recitation of “the third heat conductive particles being dispersed separately
from the first and second heat conductive particles.” Final Act. 2 (emphasis
added).6 The Examiner explained as follows:

2 US 2012/0090825 A1, published Apr. 19, 2012 (“Yarin”).
3 US 2011/0259518 A1, published Oct. 27, 2011 (“Tojo”).
4 Jeesang Hwang et al., Electrical and Mechanical Properties of Carbon-
Black-Filled, Electrospun Nanocomposite Fiber Webs, 104 J. OF APPLIED
POLYMER SCI. 2410–17 (2007) (“Hwang”).
5 US 2006/0094320 A1, published May 4, 2006 (“Chen”).
6 The Examiner also initially determined that claim 1’s recitation of a
plurality of third heat conductive particles “dispersed between the heat
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[I]it is unclear if a process of dispersing the third heat conductive
particles is being claimed (i.e., that the third heat conductive
particles are dispersed in a separate process), or if the claim is
stating that the third heat conductive particles are physically
separate from the first and second heat conductive particles.
Id. at 2–3.
Appellant asserts that “[o]ne of skill in the art would readily
understand, in light of the specification, that” the claim recitation “means
that the third heat conductive particles are physically separate from the first
and second heat conductive particles.” Appeal Br. 11. Appellant then
reproduces the following portion of the Specification:
[I]n the present invention, the heat conductive particles may be
dispersed and disposed between the heat radiation layer 10 and
the adhesive layer 20.
The heat conductive particles are disposed at the outside
of nanofibres of the heat radiation layer 10 and nanofibres of the
adhesive layer 20 that are positioned on an interface between the
heat radiation layer 10 and the adhesive layer 20, to thus better
transfer heat generated from the heat generating component of
the electronic equipment, and to thus increase the heat radiation
efficiency.
Here, when the heat conductive particles and a solvent are
mixed to create a spinning solution, and a bead made of the heat
conductive particle and the solvent is spun on the nano-web of
the adhesive layer 20, in the electrospinning process, the solvent
is volatilized and the heat conductive particles are dispersed into
the nano-web of the adhesive layer 20. Then, the nano-web of
the heat radiation layer 10 is formed at the nano-web of the
adhesive layer 20 to which the heat conductive particles are
sprayed, and the heat conductive particles are dispersed and
disposed between the above-mentioned heat radiation layer 10

radiation layer and the adhesive layer” rendered the claims indefinite. Final
Act. 2. However, the Examiner ultimately withdrew that basis of the
indefiniteness rejection. Ans. 3.
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and adhesive layer 20, to thereby manufacture the heat radiation
sheet.
Appeal Br. 11(quoting Spec. 7:5–21). Appellant does not explain how or
why the quoted portion of the Specification allegedly clarifies the meaning
of the limitation at issue. Id.
The quoted portion of the Specification does not adequately support
Appellant’s argument because it does not foreclose the other reasonable
construction. First, the quoted portion does not describe explicitly a third
plurality of heat conductive particles or any heat conductive particles that are
physically separate from first and second heat conductive particles. Instead,
the Specification effectively describes a physical continuum of heat
conductive particles throughout the disclosed heat radiation sheet. More
specifically, the Specification describes heat conductive particles within the
heat radiation layer, on the surface of that layer, within the adhesive layer,
on the surface of that layer, and between the layers. See, e.g., Spec. 5:26–27
(“[H]eat conductive particles are dispersed in the nanofibers 14 of the heat
radiation layer 10.”), 5:28–29 (“[S]ome parts of the heat conductive particles
are exposed on the surface of the nanofibres 14 of the heat radiation layer
10, to then be involved in the heat conduction.”), 6:23–24 (“The heat
conductive material that forms the adhesive layer 20 is the same as the heat
conductive material that forms the heat radiation layer 10.”), 7:8–12 (“The
heat conductive particles are disposed at the outside of nanofibres of the heat
radiation layer 10 and nanofibres of the adhesive layer 20 that are positioned
on an interface between the heat radiation layer 10 and the adhesive layer
20, to thus better transfer heat generated from the heat generating component
of the electronic equipment, and to thus increase the heat radiation
efficiency.”).
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In one possible alternative, the heat conductive particles that are
exposed on the surfaces of the layers where the layers meet can be
considered “separately dispersed” in the sense that they are dispersed
between the layers and not within either layer. Indeed, the Examiner
employs such a construction in rejecting the claims as obvious, as discussed
below. Final Act. 3, 6.
But the phrase “separately dispersed” also can be reasonably
construed as referring to a separate process. And, as the Examiner points
out, neither the Specification nor Appellant’s argument clarifies which
possible construction controls. Ans. 4–5.7
Accordingly, the indefiniteness rejection of claims 1, 2, and 4 is
affirmed.
Rejection 2—Obviousness
The Examiner determined that claim 1 would have been obvious over
Yarin, Tojo, and Hwang, as evidenced by Chen. Final Act. 3–7.
The Examiner found that Yarin teaches a heat radiation sheet having a
heat radiation layer and an adhesive layer laminated thereto. Id. at 3–4. The
Examiner further found, however, that Yarin does not teach all of the

7 In fact, and contrary to the Examiner’s finding, the Specification does
describe a separate process (i.e., spraying) of depositing heat conductive
particles. Compare Spec. 7:18–21 (“Then, the nano-web of the heat
radiation layer 10 is formed at the nano-web of the adhesive layer 20 to
which the heat conductive particles are sprayed, and the heat conductive
particles are dispersed and disposed between the above-mentioned heat
radiation layer 10 and adhesive layer 20, to thereby manufacture the heat
radiation sheet.”), with Final Act. 3 (“As best understood by the Examiner,
there is not a separate process for laying the third heat conductive
particles.”).
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features of each layer or “a plurality of third heat conductive particles
dispersed between the heat radiation layer and the adhesive layer, the third
heat conductive particles being dispersed separately from the first and
second heat conductive particles.” Id. at 4.
The Examiner found that Tojo teaches an adhesive layer “formed in
the form of a second nano-web . . . by electrospinning an adhesive material
. . . , the second nano-web composed of second nanofibers” albeit without
heat conductive particles. Id. at 4–5 (emphasis omitted). The Examiner
determined that a person of ordinary skill in the art would have modified
Yarin’s adhesive layer by making it in the form of Tojo’s “in order to
provide an adhesive layer with high tackiness which allows for steady
contact of a nanofiber sheet.” Id. at 5.
The Examiner found that “Hwang teaches the addition of carbon black
particles to polymeric nanofibers, where the carbon black is buried in the
polymer material and is partially exposed on a surface of the nanofibers.”
Id. (emphasis omitted). The Examiner determined that a person of ordinary
skill in the art would have buried carbon black fibers in both layers of the
Yarin/Tojo heat radiation sheet “in order to enhance the tensile strength of
both the heat radiation layer and the adhesive layer.” Id. at 6.8
Finally, the Examiner determined that the feature of “a plurality of
third heat conductive particles dispersed between the heat radiation layer and
the adhesive layer, the third heat conductive particles being dispersed
separately from the first and second heat conductive particles” necessarily
exists in the proposed modified heat radiation layer, explaining as follows:

8 Appellant’s Specification explicitly identifies “carbon black” as a heat
conductive material. Spec. 5:20–24.
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[W]hen the adhesive layer is laminated to the heat radiation
layer, an interface between the two layers exists and can be
defined as areas or points where nanofibers of the heat radiation
layer contact nanofibers of the adhesive layer. Since each of the
nanofibers have heat conductive particles at least partially
exposed on their surface, the particles present on the nanofibers
which contact each other from each layer can be considered a
part of the interface between the layers and thus be considered “a
plurality of third heat conductive particles”. Since this plurality
is within a space in which the heat radiation layer and the
adhesive layer interact with each other, these third heat
conductive particles can be considered “between the heat
radiation layer and the adhesive layer”. Furthermore, they can
be considered “separately dispersed” from the first and second
heat conductive particles because they are dispersed where the
layers meet, whereas the first and second heat conductive
particles are dispersed wholly within their own layer and do not
have the capability to be present in the other layer, albeit attached
to another layer’s respective nanofiber. Additionally, it should
be noted that when the adhesive layer is electrospun onto the heat
radiation layer as in Yarin as hereto modified, such an interface
is necessarily created (Chen (US20060094320) evidences that
such interweaving (see Figure 2B, 240, A/B) is inherent in any
electrospinning process where layering is performed (see
paragraph [0055])).
Id. at 6–7.
Appellant argues that Tojo is not analogous art under either criterion
of the applicable test because it “is directed to a nanofiber sheet for
attachment to human skin.” Appeal Br. 14–15; see also In re Clay, 966
F.2d 656, 658–59 (Fed. Cir. 1992) (“Two criteria have evolved for
determining whether prior art is analogous: (1) whether the art is from the
same field of endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
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the inventor is involved.”). Thus, according to Appellant, Tojo “would not
logically have commended itself to an inventor’s attention in considering the
problem of radiating heat generated from the inside of an electronic device
to the outside of the electronic device.” Appeal Br. 14.
Tojo indeed is directed to a nanofiber sheet for, among other things,
attachment to human skin (see, e.g., Tojo ¶6), but it is not limited to such
applications. Tojo is titled “Nanofiber Sheet,” and broadly “relates to a
nanofiber sheet containing a nanofiber.” Tojo ¶1; see also id. ¶2 (identifying
various nanofiber applications).
In any event, the Examiner responds to Appellant’s argument by
pointing out that “Tojo provides an adhesive shown to be advantageous and
suitable for applications where (1) electrospinning is utilized, (2) an
adhesive is needed, and (3) where the object which requires the adhesive
layer is a nanofiber sheet.” Ans. 6. The Examiner further responds:
Therefore, it can be seen that Tojo is analogous art to the claimed
invention, as Tojo is concerned with the construction of an
electrospun adhesive to be applied to an electrospun nanofiber
sheet, thereby placing it in (1) the same field of endeavor as the
claimed invention and (2) showing that it is reasonably pertinent
to the problem faced by the inventor. In other words, Tojo
teaches utilizing the same structure for the same purpose as
Appellant and therefore there is a clear showing of analogous art
when considering Tojo.
Id.
As Tojo is not limited to human skin applications, and in view of the
Examiner’s response to Appellant’s arguments,9 we find that Tojo is prior
art under at least the second prong of Clay’s test.

9 Appellant did not file a reply brief.
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Appellant next argues that the Examiner’s modification of Yarin/Tojo
in view of Hwang is unsupported because “Hwang is specifically directed to
incorporation of carbon black into a polyurethane matrix,” yet Tojo’s
adhesive is not described as a polyurethane matrix. Appeal Br. 15. This
argument is not persuasive because it attacks Hwang individually. “Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. . . . [Hwang] must be read, not in isolation, but for what it fairly
teaches in combination with the prior art as a whole.” In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986). Further, as the Examiner responds:
One of ordinary skill in the art is not an automaton and would be
driven by the disclosure of Hwang, which states that the addition
of carbon black to an electrospinning solution which produces
nanofibers, where the resulting nanofibers contain carbon black,
enhances tensile strength in the resultant structure. This is a clear
showing to one of ordinary skill in the art that the same can be
done in Tojo with a reasonable expectation of success because
Hwang and Tojo both produce nanofiber structures from
electrospinning.
Ans. 8.
Finally, Appellant argues that the Examiner’s proposed combination
would not include “a plurality of third heat conductive particles,” as recited
in claim 1. Appeal Br. 16. To paraphrase, Appellant argues that the carbon
black of the heat conductive layer can be a plurality of first heat conductive
particles and the carbon black of the adhesive layer can be a plurality of
second heat conductive particles but neither of those sources of carbon black
can simultaneously provide a plurality of third heat conductive particles. Id.
Appellant argues “[i]t is improper for the Office to rely on the same structure
as disclosing two separate claimed elements.” Id.
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But that is not what the Examiner has done. The carbon black in the
heat conductive layer is not a single structure. Nor is the carbon black in the
adhesive layer. Rather, in both instances, the carbon black refers to
numerous particles. Some of the carbon black of each layer will be buried in
the respective layer and some will be exposed on the surface of the
respective layer. Final Act. 6. The Examiner explains:
As evidenced by Chen, when a nanofiber sheet has another
nanofiber sheet electrospun onto it, an interface will necessarily
develop between the sheets. It is most easily conceptualized as
a region of “entanglement” between the fibers of each sheet
where the sheets meet. Therefore, when one nanofiber sheet is
electrospun onto another nanofiber sheet a third layer is formed
- a layer of “entangled” nanofibers. This third layer lies in
between the original two layers. Therefore, in the case of Yarin,
Tojo, and Hwang, the resultant structure is a sheet with three
layers, each layer containing its own set of heat conductive
particles. Therefore, because each layer has its own heat
conductive particles, each layers particles are “dispersed
separately” from each other because the particles in one layer are
not physically in another layer. In short, upon the
electrospinning of an adhesive layer onto Yarin, as taught by
Tojo, where all of the nanofibers contain carbon black, as taught
by Hwang, a third, middle layer is formed containing the claimed
third heat conductive particles.
Ans. 8–9.
None of Appellant’s arguments apprises us of error in the obviousness
rejection of claim 1. Accordingly, the obviousness rejection of claims 1, 2,
and 4 is affirmed.

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SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4 112 ¶2 Indefiniteness 1, 2, 4
1, 2, 4 103(a) Yarin, Tojo,
Hwang, Chen
1, 2, 4
Overall
Outcome
1, 2, 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED