Ex Parte Draper et al

Patent Trial and Appeal Board

Sep 19, 2012

11148624 (P.T.A.B. Sep. 19, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/148,624 06/09/2005 Michael Draper 930131-2001 8858
20999 7590 09/19/2012
FROMMER LAWRENCE & HAUG
745 FIFTH AVENUE- 10TH FL.
NEW YORK, NY 10151
EXAMINER
MATZEK, MATTHEW D
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
09/19/2012 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
____________

Ex parte MICHAEL DRAPER and
JOHN JAMES
____________

Appeal 2011-009080
Application 11/148,624
Technology Center 1700
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

Appeal 2011-009080
Application 11/148,624

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Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 2-25, 28-31, 33-36, and 38. We have jurisdiction under
35 U.S.C. § 6.
Claim 33 is representative of the subject matter on appeal (emphasis
added):
33. A planar element having the requisite combination of
mechanical properties and physical characteristics which adapt
it for use on a papermaking machine, said planar element
selected from the group consisting essentially of doctor blades,
coater blades, top plates, foil blades, and creping blades, and
comprising one or more components impregnated by a
polymeric resin matrix dispersion of resin and nanoparticles.
Independent claims 16 and 28 are also directed to planar elements
similar to claim 33 and each recites the limitation that is in dispute, which is
the use of “nanoparticles”.
The Examiner maintains, and Appellants appeal, the following
rejections under 35 USC 103(a):
1) claims 2-8, 10-14, 16, 21-22, 25, 28-31, 33-36 and 38 as
unpatentable over Carrier (US 6,643,890 B2 issued Nov. 11, 2003);
2) claims 2, 4-8, 10-14, 16-25, 28-31, 33-36 and 38 as unpatentable
over Carrier in view of Ishikawa (US 2004/0067364 A1 published Apr. 8,
2004);
3) claim 9 as unpatentable over Carrier in view of Dzenis
(US 6,265,333 B1 issued July 24, 2001); and
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4) claim 15 as unpatentable over Carrier in view of Ishikawa and
Veedu1 (US 2004/0180201 A1 published Sept. 16, 2004).
ANALYSIS
We sustain the rejections based on the combined prior art of Carrier
and Ishikawa, or Carrier and Dzenis, based on the findings of fact,
conclusions of law, and rebuttals to arguments expressed by the Examiner in
the Answer. We reverse the rejection based on Carrier alone, and add the
following for emphasis.
Appellants’ main arguments that one would not have made the
proposed modification to Carrier to use nanoparticles reinforcement based
on Ishikawa (Br.16-22), are unavailing. Appellants do not specifically
address the rejection of claim 9 based on Carrier with Dzenis (Br.
generally). Dzenis, similarly to Ishikawa, teaches the use of reinforcement
nanofibers or nanoparticles for a composite resin laminate (Ans. 9; Dzenis,
claim 6 (“reinforcement fibers comprise one or more microfibers or
nanofibers”)). In this regard, the claimed invention merely applies the well-
known technique as exemplified in Ishikawa or Dzenis of nanoparticle
reinforcement in reinforced resin composites to yield predictable results of
improved strength in the planar element composite of Carrier. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 415-16 (2007) (“The combination of
familiar elements according to known methods is likely to be obvious when

1 Although the statement of the rejection inadvertently refers to Dzenis, the
body of the rejection discusses Veedu in detail (Ans. 10; see also Final 9).
Veedu exemplifies the use of carbon nanotubes with polyacrylonitrile as
recited in claim 15. Appellants do not provide any specific argument to the
rejection of dependent claim 15 (App. Br. 36).
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Application 11/148,624

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it does no more than yield predictable results.”). The analysis need not seek
out precise teachings directed to the specific subject matter of the claim, for
it is proper to take account of the inferences and creative steps that a person
of ordinary skill in the art would employ. Id. at 418.
Furthermore, an improvement in the art is obvious if “it is likely the
product not of innovation but of ordinary skill and common sense.” Id. at
421. See also, Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
1329 (Fed. Cir. 2009) (“hold[ing] that while an analysis of obviousness
always depends on evidence that supports the required Graham factual
findings, it also may include recourse to logic, judgment, and common sense
available to the person of ordinary skill that do not necessarily require
explication in any reference or expert opinion.”)
Appellants have not presented any persuasive reasoning or evidence
that the use of reinforcement nanoparticles or nanofibers in Carrier would
not have been within the level of skill in the art as discussed above and in
the Examiner’s Answer. The Draper Declaration of record (submitted by
one of the co-inventors) is not persuasive as it is directed to prior art no
longer applied to the claims (Draper Declaration, Evidence Appx.). The
inventor’s opinions expressed in the Declaration and in the Briefs are not
persuasive of error in the Examiner’s rejections on appeal.
To the extent that Appellants have argued any claims separately,
Appellants have also not refuted the Examiner’s reasonable determinations
with respect to any of these claims, including those claims separately
rejected (Ans. 7-10).
Accordingly, the preponderance of the evidence supports the
Examiner’s § 103 rejections on appeal based on Carrier and Ishikawa,
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additionally with Veedu as applied to claim 15, and based on Carrier and
Dzenis as applied to claim 9.
The decision of the Examiner is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
bar