Ex Parte 7927701 et al

Patent Trial and Appeal Board

Nov 3, 2015

95001936 (P.T.A.B. Nov. 3, 2015)

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.
95/001,936 04/12/2012 7927701 P2SI-P0001D1E1 4807
103460 7590 11/04/2015
ENDURANCE LAW GROUP PLC
180 W MICHIGAN AVENUE
SUITE 501
JACKSON, MI 49201
EXAMINER
TORRES VELAZQUEZ, NORCA LIZ
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
11/04/2015 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
____________

PERFORMANCE POLYMER SOLUTIONS, INC.
Patent Owner, Appellant, and Cross-Respondent

v.

UNIVERSITY OF DAYTON RESEARCH INSTITUTE
Requester, Respondent, and Cross-Appellant
____________

Appeal 2015-007690
Inter partes Reexamination Control 95/001,936
United States Patent 7,927,701
Technology Center 3900
____________

Before JOHN A. JEFFERY, DAVID M. KOHUT, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL

Patent Owner appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s
decision to reject claims 1–5. Requester cross-appeals under 35
U.S.C. §§ 134 and 315 the Examiner’s decision to not reject claims 1–5 on
other grounds.
We have jurisdiction under 35 U.S.C. §§ 134 and 315. We affirm-in-
part.
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STATEMENT OF THE CASE
This proceeding arose from a request for inter partes reexamination
filed on behalf of Requester, on April 12, 2012,
1
of United States Patent
7,927,701 (“the ’701 patent”), issued to David B. Curliss et al. on April 19,
2011.
The ’701 patent describes vapor-grown carbon fiber (VGCF)
reinforced continuous fiber preforms for manufacturing articles. Continuous
fiber preforms are treated with a catalyst precursor and processed to yield
VGCF produced in situ. See generally Abstract. Claim 1 illustrates the
invention and is reproduced below:
1. A carbon reinforced continuous fiber preform produced
by the process of:
(a) dispersing a catalyst precursor throughout a
continuous fiber preform;
(b) converting said catalyst precursor into catalytic
particles, said catalytic particles dispersed on the continuous
fiber preform; and
(c) contacting the continuous fiber preform containing
the catalytic particles with a hydrocarbon gas;
(d) growing vapor grown carbon fibers in situ from the
catalytic particles dispersed on said continuous fiber surface,
the VGCF fused to the continuous fiber surface to yield a
carbon reinforced continuous fiber surface.

RELATED PROCEEDINGS
This appeal is related to another appeal to this Board (Appeal No.
2015-007689) filed in connection with inter partes Reexamination Control
No. 95/001,935 regarding U.S. Patent 7,338,684, the application of which is

1
Although the request was filed originally on March 13, 2012, it was refiled
on April 12, 2012 to correct informalities.
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a parent to that of the ’701 patent. PO App. Br. 1; TPR Resp. Br. 4.
2
No
decision has been rendered in the related ’935 appeal.

THE APPEALED REJECTIONS AND PROPOSED REJECTIONS
Patent Owner appeals the Examiner’s rejecting the claims as follows:
Claims 1–5 under 35 U.S.C. § 102(a) as anticipated by Olry (WO
2004/025003 A2; Mar. 25, 2004) (“Ground 1”).
3
RAN 6–7.
Claims 1–4 under 35 U.S.C. § 102(b) as anticipated by Chen (US
6,495,258 B1; Dec. 17, 2002) (“Ground 3”). RAN 8–10.
Claim 5 under 35 U.S.C. § 103(a) as obvious over Chen, Olry, E.T.
Thostenson et al., Carbon Nanotube/Carbon Fiber Hybrid Multiscale
Composites, 91 J. APPL. PHYSICS 6034 (2002) (“Thostenson”), and Shen Zhu
et al., Carbon Nanotube Growth on Carbon Fibers, 12 DIAMOND & REL.
MAT’LS 1825 (2003) (“Zhu”) (“Ground 4”). RAN 10–13.
Claims 1–5 under 35 U.S.C. § 102(b) as anticipated by Thostenson
(“Ground 5”). RAN 13–14.

2
Throughout this opinion, we refer to (1) the Examiner’s Right of Appeal
Notice mailed October 11, 2013 (“RAN”); (2) Patent Owner’s Appeal Brief
filed January 22, 2014 (“PO App. Br.”); (3) Requester’s Respondent Brief
filed February 24, 2014 (“TPR Resp. Br.”); (4) the Examiner’s Answer
mailed June 18, 2014 (incorporating the RAN by reference); (5) Patent
Owner’s Rebuttal Brief filed July 18, 2014 (“PO Reb. Br.”); (6) Requester’s
Appeal Brief filed January 21, 2014 (“TPR App. Br.”); (7) Patent Owner’s
Respondent Brief filed February 21, 2014 (“PO Resp. Br.”); and (8)
Requester’s Rebuttal Brief filed July 18, 2014 (“TPR Reb. Br.”).
3
For clarity and consistency, we refer to particular grounds of rejection
using the Examiner’s numbering scheme. See, e.g., RAN 6.
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Claims 1–5 under 35 U.S.C. § 103(a) as obvious over Thostenson,
Chen, and Olry (“Ground 6”). RAN 14–15.
Claims 1–5 under 35 U.S.C. § 103(a) as obvious over Zhu, Chen, and
Olry (“Ground 8”). RAN 16–18.

Requester cross-appeals the Examiner’s not rejecting the claims as
follows:
Claims 1–5 under 35 U.S.C. § 103(a) as obvious over Olry, Chen,
Thostenson, and Zhu (“Ground 2”). RAN 7.
Claim 5 under 35 U.S.C. § 102(b) as anticipated by Chen (“Ground
3”). RAN 10.
Claims 1–4 under 35 U.S.C. § 103(a) as obvious over Chen, Olry,
Thostenson, and Zhu (“Ground 4”). RAN 12–13.
Claims 1–5 under 35 U.S.C. § 102(b) as anticipated by Zhu (“Ground
7”). RAN 15–16.

PROCEDURAL MATTER
We first address a procedural matter, namely Patent Owner’s attempt
to incorporate portions of the Appeal Brief filed in the ’935 appeal in the
Appeal Brief in this appeal. See, e.g., App. Br. 1 (incorporating § VII of the
’935 Appeal Brief); see also id. at 5 (incorporating § VII.A.1 of the ’935
Appeal Brief), 9 (referring to pages 14 to 19 of the ’935 brief), 10 (adopting
arguments presented on Ground #1 and on pages 27 to 29 of the ’935 brief),
11 (encouraging the Board to review declaration excerpts on pages 32 to 34
of the ’935 brief); PO Reb. Br. 7 n.1 (acknowledging these incorporations).
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Patent Owner’s attempted incorporations, however, are improper.
First, Patent Owner has not shown that the Appeal Brief with the
incorporated material from the ’935 brief complies with the length
limitations under 37 C.F.R. § 1.943(c). Accord TPR Resp. Br. 8 (noting
Patent Owner’s “procedurally questionable” incorporation in view of this
rule).
Second, even assuming, without deciding, that Patent Owner’s brief
complies with the requisite length limitations when accounting for the length
of the incorporated material, the ’935 brief upon which Patent Owner relies
as the source of the incorporated material was not entered. As Patent Owner
acknowledges (PO Reb. Br. 7 n.1), the original ’935 brief exceeded the
requisite length limits, and the accompanying petition requesting to enter
this non-compliant brief was denied on November 14, 2014. Because Patent
Owner’s attempt to incorporate material from a non-compliant brief is
improper, we do not consider this incorporated material for that reason
alone.
Although a replacement brief was filed in the ’935 appeal on
December 11, 2014 which was entered, Patent Owner nevertheless refers to
the non-compliant ’935 brief in this appeal. That Patent Owner’s attempt to
append the ’935 brief to its Rebuttal Brief in this appeal was likewise
deemed improper in a Petition Decision mailed January 6, 2015 only further
underscores the impropriety of Patent Owner’s reliance on the ’935 brief in
this appeal.
But even if the ’935 brief referenced in Patent Owner’s briefs in this
appeal was compliant (which it is not), that alone would still not justify the
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attempted incorporation. Under 37 C.F.R. § 41.67(c)(vii), “[a]ny arguments
or authorities not included in the brief permitted under this section or under
§§ 41.68 or 41.71 will be refused consideration by the Board, unless good
cause is shown.” Because Patent Owner does not show such good cause, we
do not consider the incorporated arguments for this additional reason.
Accord Research In Motion Ltd. v. Simpleair, Inc., No. 2013-008777, 2013
WL 5347541, at *7 (PTAB 2013) (non-precedential) (refusing to consider
arguments incorporated by reference in the brief); Chicago Bd. Of Educ. v.
Substance, Inc., 354 F.3d 624, 630 (7th Cir. 2003) (quoting DeSilva v.
DiLeonardi, 181 F.3d 865, 867 (7th Cir. 1999) (“[A] brief must make all
arguments accessible to the judges, rather than ask them to play archeologist
with the record . . . .”)); LeVeen v. Edwards, 57 USPQ2d 1406, 1412 (BPAI
2000) (explaining why incorporated arguments are prohibited because they
(1) can be overlooked; (2) are inconsistent with efficient decisionmaking;
and (3) can avoid page limits).
Accordingly, we do not consider the arguments incorporated by
reference in Patent Owner’s briefs, but instead decide this appeal based on
the arguments presented explicitly in the parties’ briefs and the Examiner’s
findings and conclusions.

I. PATENT OWNER’S APPEAL
THE ANTICIPATION REJECTION OVER OLRY
The Examiner finds that Olry discloses a carbon reinforced
continuous fiber preform that meets the limitations of claim 1. RAN 6–7,
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24.
4
Requester concurs with the Examiner’s findings. TPR Resp. Br. 12–
13.
Patent Owner argues that Olry is not prior art because it published
after the effective filing date of the ’701 patent’s underlying application,
namely February 12, 2004—the date that the corresponding U.S. provisional
application 60/544,178 (“the provisional application”) was filed. PO App.
Br. 5–10; PO Reb. Br. 1–4. Patent Owner adds that Olry does not anticipate
claim 1 even if Olry is prior art because Olry does not disclose yarns as
preforms consistent with the definition of “preform” in the ’701 patent. PO
App. Br. 10.
The Examiner, however, finds that Olry qualifies as prior art because
the provisional application allegedly does not support the claimed subject
matter, namely “generic” catalytic particles, but rather discloses metal
catalytic particles. RAN 19. As such, the Examiner reasons, the provisional
application’s metal catalytic particle species does not support the claimed
catalytic particle genus. RAN 20–21.
Requester concurs with these findings, but adds that the provisional
application also does not support the recited catalyst precursor, let alone
converting that precursor into catalytic particles as claimed. TPR Resp. Br.
6–9. Requester adds that the provisional application also does not support
the definition of “preform” in the ’701 patent that includes non-woven mats

4
The Examiner cites Olry’s equivalent Canadian published application CA
2,498,808 A1 as a preferred English translation of the Olry reference in lieu
of Requester’s machine translation. RAN 24 n.1. Accord TPR Resp. Br. 13
(citing Olry’s Canadian application). We, therefore, cite Olry’s Canadian
application in this opinion unless otherwise indicated.
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and continuous fiber yarns, but rather only supports woven and braided
preforms. TPR Resp. Br. 9–12.

ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Olry discloses a carbon reinforced continuous fiber preform as recited in
claim 1? This issue turns on whether Olry qualifies as prior art.

ANALYSIS
We begin by noting that Olry’s publication date of March 24, 2004
precedes the earliest ’701 patent utility application filing date of February
14, 2005, but is after the corresponding provisional application filing date of
February 12, 2004. Therefore, the provisional application is critical in
determining whether Olry constitutes prior art to the ’701 patent.
For a patent to claim priority from the filing date of its provisional
application, the provisional’s specification must contain a written description
of the invention and the manner and process of making and using it, in such
full, clear, concise, and exact terms under 35 U.S.C. § 112(a) to enable an
ordinarily skilled artisan to practice the invention claimed in the non-
provisional application. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
No. 2015-1214, 2015 WL 5166366, at *2 (Fed. Cir. Sept. 4, 2015). Accord
In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (noting that, to
provide priority under § 119(e), a provisional application must provide
written description support for the claimed invention in the non-provisional
application).
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As noted above, the Examiner finds that the provisional application’s
metal catalytic particle species does not support the claimed catalytic
particle genus. RAN 19–21. We disagree.
It is well settled that disclosure of a species may be sufficient written
description for a later claimed genus including that species. Bilstad v.
Wakalopulos, 386 F.3d 1116, 1124 (Fed. Cir. 2004). There are exceptions to
this rule, however, namely when (1) there is unpredictability in performance
of certain species other than those specifically enumerated, or (2) the
specification makes clear that only the specific species is disclosed and
nothing broader. Id. at 1125. Notably, in the latter case, the specification
distinguished the prior art as inferior and touted the advantages of the
particular disclosed species, namely conical shaped cups, which did not
support claims to generic shapes. Id. (citing Tronzo v. Biomet, 156 F.3d
1154, 1159 (Fed. Cir. 1998)).
Neither exception, however, applies here. Notably, there are only two
species at issue here that fall within the genus of catalytic particles, namely
metal and non-metal catalytic particles. Although the provisional
application refers principally to metal catalytic particles, there are
nevertheless some references that are not so specific. See Prov. Appl’n 3:2–
3 (referring to “catalytic particle characteristics”); 4:21 (referring to “a
suitable catalyst particle”) (emphasis added). Still, these instances are
discussed in the context of metal catalytic particles, so skilled artisans would
reasonably infer that the referenced catalytic particles are metallic. Accord
TPR Resp. Br. 6.
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But that does not mean that the provisional application lacks support
for catalytic particles generally, for neither the Examiner nor Requester has
shown that non-metallic catalytic particles would render the recited
preform’s production any less predictable than the process using metal
catalytic particles to constitute an exception under Bilstad. Nor have the
Examiner and Requester shown that the provisional application distinguishes
metallic catalytic particles as particularly advantageous over non-metallic
catalytic particles to effectively limit the disclosure’s scope to solely metal
catalytic particles to constitute an alternative Bilstad exception.
We, therefore, find that the provisional application reasonably
supports the catalytic particles recited in claims 1 and 5. That claims 2–4 do
not even recite catalytic particles as Patent Owner indicates (PO App. Br. 9)
only underscores the Examiner’s error in this regard.
Moreover, despite Requester’s arguments to the contrary (TPR Resp.
Br. 8), we also agree with Patent Owner that the provisional application
reasonably supports converting a catalyst precursor into catalytic particles as
claimed, namely by precipitating or forming catalytic particles in situ from a
liquid or gas phase solution. PO Reb. Br. 2 (citing Prov. Appl’n 4:17–24).
Lastly, despite the Examiner’s problematic position regarding the
provisional application’s allegedly not supporting the recited catalytic
particles, we nevertheless see no error in the Examiner’s finding that the
provisional application reasonably supports the recited continuous fiber
preform. RAN 22–23. Although the provisional application lacks the
explicit definition of the term “preform” in column 1, lines 50 to 54 of the
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’701 patent,
5
we see no error in the Examiner’s finding that the woven or
braided preforms in the provisional application inherently provide a
continuous fiber construction. To the extent that Requester contends that
this continuous fiber construction excludes yarns such that it does not
comport with the “continuous fiber yarn” alternative in the ’701 patent’s
definition of “preform” (see TPR Resp. Br. 10–11), the provisional
application reasonably supports such yarns. See Prov. Appl’n 4:23–24
(“The continuous fiber yarn may also be treated so that the catalyst is
dispersed on the yarn prior to manufacturing the woven or braided perform
[sic].”).
Therefore, because the provisional application reasonably supports the
claimed subject matter, Olry does not qualify as prior art to the ’701 patent.
That both Dr. Thostenson and Dr. Pipes declare that they would be able to
make the claimed invention based on their reading of the provisional
application as Patent Owner indicates (PO App. Br. 7) only further weighs in
favor of Patent Owner’s position.
Consequently, the Examiner erred in rejecting claims 1–5 as
anticipated by Olry. Because this deficiency is dispositive regarding our
reversing the Examiner’s rejection of these claims, we need not address
Patent Owner’s other arguments in connection with this rejection.

5
The ’701 patent defines “preform” as “a continuous fiber yarn, or broad
good produced from the yarn (including non-woven mats, woven or braided
constructions) and assemblies of preforms further constructed.” ’701 patent,
col. 1, ll. 50–54.
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THE OBVIOUSNESS REJECTIONS
Because Olry does not qualify as prior art, we likewise will not
sustain the Examiner’s obviousness rejections of claims 1–5 that all cite Olry
combined with other references. See RAN 10–18.

THE ANTICIPATION REJECTION OVER CHEN
We will, however, sustain the Examiner’s anticipation rejection of
claims 1–4 over Chen. RAN 8–10. We find unavailing Patent Owner’s
contention that Chen lacks a continuous fiber preform, but rather discloses a
substrate of discrete, randomly-oriented discontinuous fibers. PO App. Br.
10–12; PO Reb. Br. 5. In short, Patent Owner does not persuasively rebut
the Examiner’s finding that Chen’s network of randomly-distributed fibers
can be formed of continuous fibers, such as cords. RAN 25–26 (citing
Chen, col. 4, ll. 57–60). Accord TPR Resp. Br. 15 (noting that Chen defines
the term “network” as a structure made up of “cords or wires” which would
constitute continuous fiber preforms).
To the extent that Patent Owner contends that Chen’s cord-based
fibers are not continuous, we disagree given the scope and breadth of the
term. First, the ’701 patent does not define the term “continuous” unlike
other terms. See, e.g., ’701 patent, col. 1, ll. 50–61 (defining “preform” and
“carbon fiber”). Although vapor-grown carbon fibers differ from
commercial carbon fiber in that the fibers are not continuous, lengths of
vapor-grown carbon fibers vary from 0.1 to 500 μm. Id. col. 2, ll. 33–38.
Given this distinction, skilled artisans would understand that fiber lengths up
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to 500 μm would not be continuous. But the same cannot be said for longer
fiber lengths given the ’701 patent’s lack of guidance in this regard.
6

Nevertheless, Dr. Thostenson declares that a continuous fiber preform
is a textile structure composed of fibers of “infinite length” (i.e., they are
generally continuous from one end of the structure to the other). Second
’935 Declaration of Erik T. Thostenson, dated Apr. 15, 2013, PO App. Br.
Ev. App’x, “Appendix_5,” at 13 (“’935 Thostenson Decl. II”). Although Dr.
Thostenson acknowledges that there may be some discontinuities in the
fibrous structure due to, for example, local fiber breakage, the
“overwhelmingly large” plurality of fibers nonetheless are said to have
infinite length and form the textile structure with a shape resembling the
final composite structure. Id. For example, if the final structure is a flat
circular plate, the fibers are cut into a circular shape where the fiber ends
occur only at the structure’s edge. Id.
In light of these properties, Dr. Thostenson concludes that Chen’s
preform, while forming a shape, is nonetheless formed of discontinuous
fibers to achieve the requisite macroporosity for cold field electron
emissions. Id. Accord First ’936 Declaration of Erik T. Thostenson, dated
August 3, 2012, PO App. Br. Ev. App’x, “Appendix_1,” at 9 (“’936
Thostenson Decl. I”) (“I do not think that Chen can be altered to be a

6
Although Patent Owner contends that fibers less than four inches long are
not “continuous” in connection with a proposed rejection over Zhu in the
cross appeal (PO Resp. Br. 22–23), the scope and breadth of the term
“continuous” does not preclude such lengths. Although this particular
argument was not made in connection with the rejection over Chen, it
nonetheless informs our understanding of Patent Owner’s interpretation of
the term “continuous” and is, therefore, relevant in that regard.
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continuous fiber preform because it could no longer be a sponge-like
structure, and would not be suitable for cold field emission of electrons.”).
Dr. Pipes, too, opines that Chen’s preform is not a continuous fiber
preform, but rather consists of fibers connected at their junctions. ’936
Declaration of R. Byron Pipes, dated Aug. 5, 2012, PO App. Br. Ev. App’x
“Appendix_2,” at 5 (“’936 Pipes Decl.”). According to Dr. Pipes, the term
“continuous fiber” in the art refers to multiple arrangements of fiber preform
architecture such as a textile fabric or collimated fiber form, but does not
refer to fibers joined at the cross-over or junction points as in Chen. Id.
Although we appreciate Dr. Thostenson’s and Dr. Pipes’ insights in
this regard, their opinions regarding Chen’s allegedly lacking continuous
fibers are unsupported by objective factual evidence on this record which
tends to weaken their probative value. See Ashland Oil, Inc. v. Delta Resins
& Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985). Nor are Patent
Owner’s proffered interpretations of “continuous fiber preform”
commensurate with the scope and breadth of the term.
Because the Specification does not define the term “continuous” as
noted previously, we interpret the term with its plain meaning. To this end,
the term “continuous” is defined, in pertinent part, as “going on or extending
without interruption or break; unbroken; connected.” WEBSTER’S NEW
WORLD DICTIONARY OF AMERICAN ENGLISH 302 (3d College ed. 1993)
(emphasis added). Our emphasis on the latter term underscores the fact that
nothing in this definition precludes Chen’s fiber network from constituting a
“continuous fiber preform” despite the constituent fibers being connected to
other such fibers at their crossing points. See Chen, col. 4, ll. 57–60 (noting
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that the term “network” means a structure of cords or wires that cross at
regular intervals and are knotted or secured at the crossing). Despite Patent
Owner’s contentions to the contrary (PO App. Br. 12), nothing in the claim
precludes Chen’s discrete fibers in this network, for their connection yields a
continuous fiber preform under the term’s broadest reasonable interpretation.
To the extent that Patent Owner contends that the fibers of Chen’s network
are 500 μm or less so as to not be continuous according to column 2, lines 32
to 38 of the ’701 patent, Patent Owner has not evidenced that this is the case,
let alone shown that that their connection yields a preform less than or equal
to this maximum dimension.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1 as anticipated by Chen, and claims 2–4 not argued separately with
particularity.

THE ANTICIPATION REJECTION OVER THOSTENSON
Claims 1 and 5
We also sustain the Examiner’s anticipation rejection of claim 1 over
Thostenson. RAN 13–14. Claim 1 recites, in pertinent part, a continuous
fiber preform produced by (1) disposing a catalyst precursor throughout a
continuous fiber preform, and (2) converting the precursor into catalytic
particles dispersed on the preform.
The Examiner finds that Thostenson’s hybrid multiscale composite is
identical to the recited carbon-reinforced continuous fiber preform because
both articles are said to comprise a continuous fiber preform and vapor
grown fibers grown in situ in the fibers’ surface. RAN 14. Notably, the
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Examiner emphasizes that claim 1 is a product-by-process claim whose
patentability is determined based on the product itself, not by the process by
which it is made. Id.
Requester concurs with these findings, adding that while Thostenson
uses sputter deposition and reduction to produce catalyst particles for
forming nanocarbon fibers, there is allegedly no evidence that the recited
preform differs from that of Thostenson. TPR Resp. Br. 18–20.
Patent Owner, however, maintains that Thostenson’s fiber bundles are
coated with a catalyst only on the surface unlike the claimed invention that
disperses a catalyst throughout the preform. PO App. Br. 14–16; PO Reb.
Br. 5–6. As such, Patent Owner contends, Thostenson’s surface application
cannot disperse the precursor film throughout the continuous fiber as
claimed. PO App. Br. 16.
We find the weight of the evidence on this record favors the
Examiner’s position. First, we agree with Requester that Thostenson’s yarn-
based fiber bundle constitutes a continuous fiber preform under the term’s
broadest reasonable interpretation. TPR Resp. Br. 18–19.
Second, patentability of the recited preform does not depend on its
method of production. See In re Thorpe, 777 F.2d 695, 698 (Fed. Cir.
1985). Although Thostenson coats a catalyst precursor on a preform and
does not disperse the catalyst throughout the preform as claimed, we cannot
say—nor has Patent Owner shown—that the resulting structure is different
from the claimed preform despite the different processes used to produce the
respective preforms.
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Notably, claim 1 recites, in pertinent part, a continuous fiber preform
produced by (1) converting the dispersed catalyst precursor into catalytic
particles dispersed on the preform, and (2) growing carbon fibers in situ
from the catalytic particles dispersed on the surface such that the fibers are
fused to the surface.
Our emphasis underscores the fact that although the recited process
requires dispersing a catalyst throughout the preform, the resulting particles
carbon fibers are nonetheless disposed with respect to the fiber surface. To
be sure, Thostenson does not disperse a catalyst precursor throughout a
preform, but rather coats a catalyst on a fiber surface such that the resulting
carbon nanotubes are limited to the fiber bundle’s periphery as Dr.
Thostenson indicates. PO App. Br. 14–15; PO Reb. Br. 6 (citing Second
’936 Declaration of Erik T. Thostenson, dated Apr. 20, 2013, PO App. Br.
Ev. App’x “Appendix_4,” at 16–17 (“’936 Thostenson Decl. II”)).
But Patent Owner has not shown that the structure resulting from the
recited pre-conversion catalyst dispersion differs from that resulting from
Thostenson’s pre-conversion catalyst coating, at least with respect to the
resulting fibers that are fused to the surface as claimed. Even assuming,
without deciding, that Thostenson’s carbon nanotubes are limited to the
bundle’s periphery as Dr. Thostenson declares, nothing in the claim
precludes such a structure, for claim 1 merely requires that the carbon fibers
are fused to the surface (i.e., the periphery).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claim 5 not argued separately with particularity.

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Claims 2–4
We will not, however, sustain the Examiner’s rejection of independent
claim 2 reciting, in pertinent part, vapor-grown carbon fibers dispersed
throughout a continuous fiber preform. Unlike claims 1 and 5, claim 2
requires dispersing the carbon fibers throughout the preform. Although
Thostenson’s carbon nanotubes are fused to the preform surface as noted
previously, they are not dispersed throughout the preform.
Therefore, we are persuaded that the Examiner erred in rejecting
independent claim 2 and dependent claims 3 and 4 for similar reasons.

II. THE CROSS APPEAL
THE PROPOSED OBVIOUSNESS REJECTIONS
Because Olry does not qualify as prior art as noted above, we sustain
the Examiner’s decision declining to reject (1) claims 1–5 as obvious over
Olry, Chen, Thostenson, and Zhu, and (2) claims 1–4 as obvious over Chen,
Olry, Thostenson, and Zhu. RAN 7, 12–13.

THE PROPOSED ANTICIPATION REJECTION OF CLAIM 5 OVER
CHEN

We likewise sustain the Examiner’s decision declining to reject claim
5 as anticipated by Chen. RAN 8, 10. It is undisputed that Chen does not
disclose the recited infusion step explicitly. See TPR App. Br. 8; see also
PO Resp. Br. 19–20 (noting this admission). Nevertheless, Requester argues
that Chen anticipates claim 5 when the reference is considered in light of the
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fact that the recited infusion techniques were allegedly known in the art.
TPR App. Br. 8–10.
But even assuming, without deciding, that the recited infusion
techniques were known in the art as Requester asserts, that does not mean
that Chen’s composite article is necessarily produced by the recited
infusion—a crucial requirement for inherent anticipation. See In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Although patentability of
the recited composite article does not depend on its method of production,
Thorpe, 777 F.2d at 698, Requester has not shown that the resulting
composite article produced by the recited process is necessarily the same as
that disclosed by Chen. To the extent that this infusion would have been
obvious over Chen in light of the state of the art at the time of the invention,
such a question is not before us. But what we can say is that Chen does not
anticipate claim 5.
Therefore, we are not persuaded that the Examiner erred in declining
to reject claim 5 as anticipated by Chen.

THE PROPOSED ANTICIPATION REJECTION OVER ZHU
We also sustain the Examiner’s decision declining to reject claims 1–5
as anticipated by Zhu. RAN 15–16. According to the Examiner, Zhu lacks
a continuous fiber preform as the substrate in which carbon fibers are grown
to anticipate the claims. RAN 15 (emphasis in original). Patent Owner
concurs with these findings, adding that not only is Zhu’s single fiber or
filament not a continuous fiber preform, but Zhu grows CNTs on these
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single fibers and, therefore, does not disperse catalyst particles throughout a
preform as claimed. PO Resp. Br. 21–23.
Requester argues that because Zhu discloses the preparation and
analysis of a yarn of plural, unbroken carbon fibers that can be wiped, Zhu’s
fibers qualify as a continuous fiber preform. TPR App. Br. 12–14.
Requester adds that Zhu anticipates the claims because skilled artisans
would (1) read Zhu as directed to CNT-modified carbon fibers generally,
and (2) know that these fibers are widely used in preforms formed from
continuous fiber yarns. TPR App. Br. 14–15.
We find the weight of the evidence on this record favors the
Examiner’s position. As noted previously, the ’701 patent defines
“preform” as “a continuous fiber yarn, or broad good produced from the
yarn (including non-woven mats, woven or braided constructions) and
assemblies of preforms further constructed.” ’701 patent, col. 1, ll. 50–54.
Although Zhu’s carbon fibers on which CNTs are grown are
“continuous” under the term’s broadest reasonable interpretation, we cannot
say—nor has Requester shown—that they necessarily constitute a “preform”
as defined in the ’701 patent, namely a continuous fiber yarn or good
produced from that yarn.
Because the ’701 patent does not define the term “yarn,” we construe
the term with its plain meaning, namely “[a] continuous strand of two or
more plies of carded or combed fibers twisted together, or a single filament
of natural or synthetic fibers used for weaving or knitting.” MCGRAW-HILL
DICTIONARY OF SCIENTIFIC & TECHNICAL TERMS 2183 (5th ed. 1994 Sybil P.
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Parker ed.) (emphases added). Our emphasis above underscores the fact that
a yarn must have plural fibers: a single fiber is insufficient.
Therefore, to say that Zhu’s fibers are necessarily yarns to qualify as
preforms under the ’701 patent definition as Requester seems to suggest
strains reasonable limits on this record. Although Zhu refers to plural fibers
that are dipped, wiped, and placed in a furnace to grow CNTs thereon as
Requester indicates (TPR App. Br. 12–13), that does not necessarily mean
that they are so processed collectively as a group, let alone that they form a
yarn. Rather, each fiber could be processed separately. Accord ’936
Thostenson Decl. II 17–18 (“That Zhu uses a single fiber or filament is
clearly visible in Figs. 1(a)-(d) of Zhu. . . . [A] single fiber cannot be
considered a continuous fiber preform . . . .”); ’936 Pipes Decl. 5 (“Zhu
describes an experiment where a carbon fiber is dipped in a ferrofluide
solution as a catalyst.”) (emphases added). On this record, then, we cannot
say that Zhu necessarily discloses a yarn to constitute a continuous fiber
preform as defined in the ’701 patent—a crucial requirement for inherent
anticipation. See Robertson, 169 F.3d at 745.
We also find unavailing Requester’s contention that Zhu allegedly
anticipates the claims because skilled artisans would (1) read Zhu as directed
to CNT-modified carbon fibers generally, and (2) know that these fibers are
widely used in preforms formed from continuous fiber yarns. TPR App. Br.
14–15. Not only are these contentions speculative, but Requester’s
arguments are more germane to obviousness, not anticipation. To anticipate,
the claimed subject matter must be necessarily present in the cited
reference—which it is not. See Robertson, 169 F.3d at 745. To the extent
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that the claimed invention would have been obvious over Zhu, such a
question is not before us, nor will we speculate in that regard here in the first
instance on appeal.
Therefore, we are not persuaded that the Examiner erred in declining
to reject claims 1–5 as anticipated by Zhu.

CONCLUSION
Under § 102, the Examiner did not err in rejecting (1) claims 1–4 as
anticipated by Chen, and (2) claims 1 and 5 as anticipated by Thostenson,
but erred in rejecting (1) claims 1–5 as anticipated by Olry, and (2) claims
2–4 as anticipated by Thostenson.
Under § 103, the Examiner erred in rejecting (1) claim 5 as obvious
over Chen, Olry, Thostenson, and Zhu; (2) claims 1–5 as obvious over
Thostenson, Chen, and Olry; and (3) claims 1–5 as obvious over Zhu, Chen,
and Olry.
Under § 102, the Examiner did not err in declining to reject (1) claim
5 as anticipated by Chen, and (2) claims 1–5 as anticipated by Zhu.
Under § 103, the Examiner did not err in declining to reject (1) claims
1–5 as obvious over Olry, Chen, Thostenson, and Zhu, and (2) claims 1–4 as
as obvious over Chen, Olry, Thostenson, and Zhu.

DECISION
The Examiner’s decision is affirmed-in-part.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
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In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED-IN-PART

Klh

Patent Owner:

Endurance Law Group PLC
180 W. Michigan Ave.
Suite 501
Jackson, MI 49201

Third Party Requester:

Thompson Hine LLP Intellectual Property Group
10050 Innovation Drive
Suite 400
Dayton, OH 45342-4934