Ex Parte Amini et al

Patent Trials and Appeals BoardMar 29, 2019

14592196 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/592,196 01/08/2015 Shahram Amini 54549 7590 04/02/2019 CARLSON, GASKEY & OLDS/PRATT & WHITNEY 400 West Maple Road Suite 350 Birmingham, MI 48009 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 74853US02;67097-2797PUS1 2628 EXAMINER HASAN, SABBIR ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 04/02/2019 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): ptodocket@cgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHAHRAM AMINI and CHRISTOPHER W. STROCK Appeal2018-007808 1 Application 14/ 592, 1962 Technology Center 3700 Before MICHAEL R. ZECHER, PHILIP J. HOFFMANN, and TARA L. HUTCHINGS, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1-31. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 Our decision references Appellants' Appeal Brief ("App. Br.," filed Jan. 10, 2018) and Reply Br. ("Reply Br.," filed July 23, 2018), and the Examiner's Final Office Action ("Final Act.," mailed July 13, 2017) and Answer ("Ans.," mailed May 22, 2018). 2 Appellants identify the United Technologies Corporation as the real party in interest. App. Br. 2. Appeal2018-007808 Application 14/ 592, 196 CLAIMED INVENTION Appellants' claimed invention generally relates to "abradable seals for gas turbine engines." Spec. ,r 2. Claims 1, 10, 16, and 21 are the independent claims on appeal. Claim 21, reproduced below, is illustrative of the claimed subject matter: 21. A composition comprising: a polymeric matrix; and a dispersion of a nanolayer material within the polymeric matrix, wherein the nanolayer material includes at least one of sheet-structured graphene that has a bonded network of carbon atoms in a 2-dimensional geometry or MXene that has a formula ofMn+1Xn. REJECTIONS 3, 4 Claims 21 and 23-25 are rejected under 35 U.S.C. Â§ I02(a)(l) as anticipated by Nejhad (US 7,658,870 B2, iss. Feb. 9, 2010). Claims 1, 2, and 4--9 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Putnam (US 8,020,875 B2, iss. Sept. 20, 2011), Murdock (US 2013/0156588 Al, pub. June 20, 2013), and Nejhad. Claim 3 is rejected under 35 U.S.C. Â§ 103 as unpatentable over Putnam, Murdock, Nejhad, and Barsoum (US 2014/0162130 Al, pub. June 12, 2014). 5 Claims 10, 11, 13-16, and 18-20 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Putnam and Nejhad. 3 The Examiner withdrew the rejections under 35 U.S.C. Â§Â§ 112(a) and (b). Ans. 3. 4 The rejections before the Board do not address pending claims 26-31. 5 Because the Examiner applies Nejhad to reject independent claim 1, we treat the Examiner's omission ofNejhad in the statement of the rejection for dependent claim 3 as inadvertent. See Final Act. 10. 2 Appeal2018-007808 Application 14/ 592, 196 Claims 12, 17, and 22 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Putnam, Nejhad, and Barsoum. 6 ANALYSIS Anticipation Independent Claim 21 and Dependent Claims 23-25 We are not persuaded by Appellants' argument that the Examiner erred in rejecting independent claim 21 under 35 U.S.C. Â§ 102(a)(l) because Nejhad does not teach a nanolayer material within the polymeric matrix that "includes at least one of sheet-structured graphene that has a bonded network of carbon atoms in a 2-dimensional geometry or MXene that has a formula Mn+iXn," as recited in claim 21. App. Br. 5---6; see also Reply Br. 2 (arguing the same). The Examiner finds that Nejhad's single-wall carbon nanotubes (SWCT) teaches the argued limitation because it "includes at least one sheet-structured graphene," as required by the claim language. Final Act. 5 (citing Nejhad, col. 6, 11. 32-35). Nejhad relates to reinforcement of polymer matrices with low concentrations of uniformly dispersed nanomaterials. Nejhad col. 1, 11. 29- 33. The nano-scale reinforcement includes carbon nanotubes, such as SWCT. Id. at col. 6, 11. 9-10, Fig. lB. An SWCT "can be conceptualized as wrapping a one-atom-thick layer of graphite called graphene into a seamless cylinder." Id. at col. 6, 11. 33-36. Appellants and the Examiner dispute whether graphene wrapped into a seamless cylinder (i.e., an SWCT), as 6 Because the Examiner applies Nejhad to reject independent claims 10 and 16, we treat the Examiner's omission ofNejhad in the statement of the rejection for dependent claims 12 and 17 as inadvertent. See Final Act. 14-- 15. 3 Appeal2018-007808 Application 14/ 592, 196 described by N ejhad, satisfies claim 21 's requirement for the nano layer material to include sheet-structured graphene that has a bonded network of carbon atoms in a 2-dimensional geometry. Appellants contend that Nejhad's SWCT cannot be interpreted as "sheet structured" or as "having a 2-dimensional geometry," as required by claim 21, because the SWCT comprises carbon atoms arranged into a cylinder, and a cylinder is a 3-dimensional shape. App. Br. 5---6; see also Reply Br. 2 (arguing the same). However, we agree with the Examiner that Appellants' arguments are not commensurate with the scope of claim 21. Ans. 3--4. Claim 21 does not require the nanomaterial itself to be sheet structured or to have a 2-dimensional geometry. Instead, claim 21 recites that the nanolayer material dispersed within the polymeric matric "includes ... sheet-structured graphene that has a bonded network of carbon atoms in a 2-dimensional geometry." It is well-settled that an inventor may provide a meaning for a term by defining the term in the specification "with reasonable clarity, deliberateness, and precision." In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Here, Appellants' Specification defines "sheet-structured graphene" as "a bonded network of carbon atoms in a 2-dimensional geometry." Spec. ,r 52. In other words, claim 21 recites the nanomaterial includes sheet- structured graphene together with the definition for sheet-structured graphene. We also agree with the Examiner's reliance on extrinsic evidence to further clarify the explicit definition for "sheet-structured graphine" in the Specification. Final Act. 17. As the Examiner explains, "graphene" is generally understood to mean a single flat sheet of carbon atoms arranged in a repeating hexagonal lattice, which is a 2-dimensional geometry. See 4 Appeal2018-007808 Application 14/ 592, 196 MERRIAM-WEBSTER DICTIONARY, https://www.merriam- webster.com/dictionary/ graphene) (last visited Mar. 20, 2019). In other words, "graphene" meets the definition for the claimed "sheet-structured graphene," in light of Appellants' express definition for that term set forth in the Specification. Because Nejhad's SWCT is nothing more than a one-atom-thick layer of graphene (i.e., "sheet-structured graphene") wrapped into a seamless cylinder, the SWCT effectively "includes ... sheet-structured graphene that has a bonded network of carbon atoms in a 2-dimensional geometry." Stated differently, even though Nejhad's SWCT itself is cylindrical in nature, the SWCT nonetheless "includes" sheet-structured graphene, which, by definition, is sheet-structured and has a two-dimensional geometry, thereby satisfying the language recited in claim 21. Therefore, we sustain the Examiner's rejection under 35 U.S.C. Â§ 102(a)(l) of independent claim 21, and dependent claims 23-25. Obviousness Independent Claims 1, 10, and 16, and Dependent Claims 2, 4-9, 11-15, 17-20, 22 Independent claims 1, 10, and 16 each recites language similar to claim 21. Appellants argue that the Examiner's obviousness rejections of these claims suffer from the same deficiencies set forth above with respect to the anticipation rejection of independent claim 21. We are not persuaded that the Examiner erred in rejecting these claims for the same reasons set forth above with respect to claim 21. 5 Appeal2018-007808 Application 14/ 592, 196 Therefore, we sustain the Examiner's obviousness rejections of independent claims 1, 10, and 16 and dependent claims 2, 4--9, 11-15, 17- 20, and 22 for the same reasons described above with respect to claim 21. Dependent Claim 3 Dependent claim 3 depends from independent claim 1 and further recites that "the nanolayer material includes MXene." In rejecting claim 3, the Examiner finds that the combination of Putnam, Murdock, and Nejhad does not teach this limitation. Final Act. 10. However, the Examiner finds that Barsoum teaches that the nanolayer material includes MXene. See id. ( citing Barsoum ,r 17). Turning to the stated rationale to combine, the Examiner determines that it would have been obvious to modify the nanolayer material of Putnam, Murdock, and Nejhad to includes MXene, as taught by Barsoum, to "provide[] better bonding and dispersion to the polymer matrix when used as a reinforcement to a polymeric matrix." Id. Appellants do not dispute that Barsoum teaches that the nanolayer material includes MXene. App. Br. 6-7. Instead, Appellants point out that Putnam teaches using organic microballoons as reinforcement in seals instead of inorganic filler, because the inorganic filler "can fuse and be detrimental to downstream hardware." Id. at 7 ( citing Putnam ,r,r 4, 87). The Examiner responds that, although Putnam teaches that some inorganic fillers in an abradable seal can fuse with rubbed debris and damage 7 Appellants refer to certain disclosures in Putnam using paragraph symbols. Putnam, however, is an issued patent that uses column and line numbers. As a result, it is not readily apparent to us the disclosures in Putnam that Appellants rely on to support their argument with respect to dependent claim 3. 6 Appeal2018-007808 Application 14/ 592, 196 downstream hardware, it also discloses that inorganic fillers are commonly used for matrix reinforcement. Ans. 6; see also Putnam 1 :39-41 ("These inorganic fillers are commonly used for matrix reinforcement and thermo- oxidative stability."). We are unpersuaded that one of ordinary skill in the art would not have had a sufficient reason to combine the teachings of Putnam, Murdock, and Nejhad with those of Barsoum. The mere fact that a different material provides different advantages or disadvantages does not establish a teaching away sufficient to preclude a conclusion of obviousness. See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) ("[C]ase law does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide [the] motivation [ or reason] for the current invention."). Therefore, we sustain the Examiner's obviousness rejection of dependent claim 3. DECISION The Examiner's rejection of claims 21 and 23-25 under 35 U.S.C. Â§ 102(a)(l) is affirmed. The Examiner's rejections of claims 1-20 and 22 under 35 U.S.C. Â§ 103 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 7