Ex Parte Gu et al

Patent Trial and Appeal Board

Feb 16, 2016

13483783 (P.T.A.B. Feb. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/483,783 05/30/2012 Tao Gu
22798 7590 02/17/2016
QUINE INTELLECTUAL PROPERTY LAW GROUP, P,C
POBOX458
ALAMEDA, CA 94501
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.
318-000241 us 5349
EXAMINER
PENNY, TABATHAL
ART UNIT PAPER NUMBER
1712
MAILDATE DELIVERY MODE
02/17/2016 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 TAO GU, THOMAS R. OMSTEAD, NING WANG,
YI DONG, and YI-QUN LI
Appeal2014-004719
Application 13/483,783
Technology Center 1700
Before BRADLEY R. GARRIS, BEYERL YA. FRANKLIN, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.
ANKENBRAND, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 43-71 and 128-134. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
The Invention
Appellants' invention relates to methods of coating nanoparticles with
an ionomer by combining the nanoparticles with ionomer in a pressure
1 Appellants identify Intemax Corporation as the real party in interest. App.
Br. 1.
Appeal2014-004719
Application 13/483,783
vessel and pressure treating the vessel (claim 4 3) and methods of forming a
composite material of nanoparticles and liquefied polymer by mixing the
materials and pressure treating the mixture (claim 68). Spec. i-fi-128, 32, 131.
The coated nanoparticles and nanoparticle composite are used in fuel cell
applications. Id. at i-f 14. Claims 43 and 68 are representative of the claims
on appeal, and are reproduced below from the Claims Appendix to the
Appeal Brief:
43. A rnethod of coating a plurality of nanopartic1es with an
ionomer, the method comprising:
contacting the nanoparticles with the ionomer;
placing the nano particles in the pressure vessel; and,
pressurizing the pressure vessel, whereby said pressurizing
increases contact or coating of the ionomer on the
nanoparticles.
68. A method of forming a nanoparticle composite material,
the method comprising:
combining a collection of nanoparticles with a liquefied
polymer to form a mixture; and,
pressurizing the mixture to form a composite of the polymer
and nanoparticle material.
App. Br. 19, 22 (Claims App'x).
Pollack
Lemelson
Mullen
Rinne
Redding
Desmarteau
Shine
Kawahara
Tennent
The References
us 3,702,019
us 4,207' 154
us 5,231,028
us 5,234,335
us 5,271,881
us 5,463,005
us 5,766,637
us 6,015,635
us 6,099,965
2
Nov. 7, 1972
June 10, 1980
July 27, 1993
Aug. 10, 1993
Dec. 21, 1993
Oct. 31, 1995
June 16, 1998
Jan. 18,2000
Aug. 8, 2000
Appeal2014-004719
Application 13/483,783
Resasco
Schlesiger
US 6,333,016 Bl
US 2003/0130500 Al
Dec. 25, 2001
July 10, 2003
Rongzhi Li et al., Application of plasma technologies in fibre-
reinforced polymer composites: a review of recent developments,
28 COMPOSITES PART A: APPLIED SCT. & MFG. 73-86 (1997) ("Li").
J. R. Vargas Garcia & Takashi Goto, Chemical Vapor Deposition of
Iridium, Platinum, Rhodium, and Palladium, 44 MATERIALS
TRANSACTIONS 1717-1728 (2003) ("Garcia").
The Rejections
1. Claims 43---67, 128-131, 133, and 134 are rejected under 35 U.S.C.
§ 112, second paragraph as indefinite;
2. Claims 68 and 134 are rejected under 35 U.S.C. § 102(b) as
anticipated by Kawahara;
3. Claims 43, 44, 49, 50, 55, 59, 61-66, 68, 69, 71, 129, 130, 132, and
134 are rejected under 35 U.S.C. § 103(a) as unpatentable over the
combination of Kawahara and Redding;
4. Claims 45 and 70 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kawahara, Redding, and Tennent;
5. Claims 46-48 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kawahara, Redding, Tennent, and
Resasco;
6. Claims 51-53 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kawahara, Redding, and Li;
7. Claims 54 and 56 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kawahara, Redding, and Schlesiger;
8. Claim 57 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Kawahara, Redding, and Rinne;
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Application 13/483,783
9. Claim 58 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Kawahara, Redding, and Lemelson;
10. Claim 60 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Kawahara, Redding, and Desmarteau;
11. Claim 67 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Kawahara, Redding, Mullen, and Pollack;
12. Claim 128 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Kawahara, Redding, and Garcia;
13. Claims 43, 44, 50, 55, 59, 61---66, 68, 69, 71, and 129--134 are
rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of
Kawahara and Shine;
14. Claims 45 and 70 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kawahara, Shine, and Tennent;
15. Claims 46-48 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kawahara, Shine, and Resasco;
16. Claims 51-53 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kawahara, Shine, and Li;
17. Claims 54 and 56 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kawahara, Shine, and Schlesiger;
18. Claim 57 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Kawahara, Shine, and Rinne;
19. Claim 60 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Kawahara, Shine, and Desmarteau;
20. Claim 67 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Kawahara, Shine, Mullen, and Pollack;
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Application 13/483,783
21. Claim 128 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Kawahara, Shine, and Garcia;
OPINION
After having considered each of Appellants' contentions and the
evidence presented in this Appeal, we determine that Appellants have
identified reversible error in the Examiner's rejection of claims 43---67, 128-
131, 133, and 134 under 35 U.S.C. § 112, second paragraph. We, therefore,
reverse that rejection for the reasons identified in the Appeal Brief and
below. We are not persuaded, however, that Appellants identify reversible
error in Examiner's rejection of claims 68 and 134 under 35 U.S.C. § 102(b)
or the Examiner's rejections of claims 43-71 and 128-134 under 35 U.S.C.
§ 103 and we affirm these rejections for the reasons expressed in the Final
Action, Answer, and below.
Indefiniteness
The Examiner determines that the terms "increases," "increasing,"
"increase," and "increased" as used in claims 43, 129, 133, and 134 are
relative terms and render the claims indefinite. Final Act. 2. The Examiner
maintains that the claims do not define the terms, the Specification does not
provide any standard, and it is unclear whether "the increase is based on a
comparison to some standard of the art or a comparison to the method
without pressurization." Id.; Ans. 2.
The Examiner, however, fails to show that one of ordinary skill in the
art would not have understood the scope of the terms, particularly in view of
the plain language of, e.g., claim 43. As Appellants argue, the language of
claim 43 indicates that the pressurization increases coating of the
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Application 13/483,783
nanoparticles over their condition before the pressunzmg step. App. Br. 3-
4, 19. The Specification supports such an interpretation, as it explains that
"[t]he pressurization can, e.g., provide a more uniformly dispersed coating
of the nanoparticles than is typically provided by contact without exposure
to high pressure." Spec. i-f 28. The Specification further states that
"application of hydrostatic pressure can greatly improve coating of
nanostructures with ionic polymers" as compared to prior art methods of
coating, such as spraying the nanostructures with an ionic polymer. Id.
i-fi-1130-31; see id. Fig. 16. On this record, the Examiner fails to explain
adequately why the plain language of claim 43, which the Specification
supports, does not circumscribe the metes and bounds of the claim to a
skilled artisan. Accordingly, we reverse the rejection under 35 U.S.C. § 112,
second paragraph.
Anticipation by Kawahara
Appellants argue claims 68 and 134 as a group, relying on the
limitations recited in claim 68. We, therefore, limit our discussion to claim
68, and claim 134 stands or falls with claim 68.
Anticipation requires that every limitation of the claims in issue be
disclosed, either expressly or inherently, in a single prior art reference. In re
NTP, Inc., 654 F.3d 1279, 1302 (Fed. Cir. 2011).
The Examiner finds that Kawahara discloses all of the limitations of
claim 68. Final Act. 3 (citing Kawahara Abstract, 8:15-17, 8:55-9:15).
Appellants challenge the Examiner's finding that Kawahara discloses
pressurizing the mixture of nanoparticles and polymer to form a composite.
App. Br. 5. In particular, Appellants point to Kawahara's disclosure of "hot
pressing" the catalyst paste and argue that hot pressing together paste-
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Application 13/483,783
smeared paper in a vented environment does not pressurize the paste. Id. at
5---6. Appellants further argue that, even ifKawahara's pressing were
considered pressurizing, it does not press the paste, but, rather, the carbon
paper on which the paste is smeared. Id. at 6.
Appellants' arguments are not persuasive of error in the Examiner's
finding that Kawahara discloses pressurizing a mixture of nanoparticles and
liquefied polymer. The Examiner's finding is supported by the express
disclosure of Kawahara, which explains that the catalyst paste (i.e., a
mixture of nanoparticles and liquefied polymer) applied to the carbon paper
is disposed across the electrolyte film and hot pressed "under the surface
pressure of 50 kg/ cm2." Kawahara 8: 16-17. Appellants fail to provide
rebuttal evidence or argue persuasively that Kawahara's method, which
presses under a surface pressure, does not pressurize the paste. 2
Accordingly, we affirm the rejection under 35 U.S.C. § 102.
Obviousness over Kawahara and Redding
Although the Examiner relies upon additional references in
combination with Kawahara and Redding in rejecting the appealed claims,
Appellants argue as one group all of the rejections based on the combination
of Kawahara and Redding, except for the rejection of claims 46-48. See
App. Br. 7-12. We, therefore, limit our discussion to claim 43, which is
representative of the claims on appeal, and claims 46-48. Independent claim
2 Appellants argue in reply that the claims require pressurizing in a pressure
vessel and the Examiner does not point to such a vessel in Kawahara's
disclosure. Reply Br. 3. Claim 68, however, does not recite a pressure
vessel, and Appellants do not argue persuasively that such an interpretation
of claim 68 is warranted.
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68 stands or falls with claim 43 and the remammg dependent claims stand or
fall with their parent independent claim.
Claim 43. Kawahara teaches a method of coating a plurality of
nanoparticles with an ionomer, i.e., Nafion, by mixing and dispersing the
nanoparticles in a solution ofNafion and, subsequently, feeding the
dispersion or slurry into a spray drying apparatus. Kawahara 8:59--9:3; Final
Act. 3--4. The spray drying produces nanoparticles having surfaces coated
with the ionomer. Kawahara 9:3-5; Final Act. 3. The Examiner
acknowledges that Kawahara does not disclose coating in a pressure vessel
or pressurizing the vessel to enhance nanoparticle coating, but relies on
Redding for these teachings. Final Act. 4.
Redding discloses a method for making core-shell particles (i.e., a
particle coating method) comprising pressurizing a liquid carrier medium
containing a dispersion of the core and shell materials in a pressure vessel.
Redding Abstract; Final Act. 4. Redding further discloses that the
pressurizing results in enhanced coating of the particles, provides reduced
time and more accurate adjustment of particle size/shell thickness as
compared to conventional methods of coating, e.g., spray drying, and
permits a wider range of core and shell materials to be utilized. Redding
Abstract, 4:40-57, 8:3-20; Final Act. 4; Ans. 4. The Examiner concludes
that it would have been obvious to use Redding's pressurizing coating
method as a suitable alternative to Kawahara's spray drying coating method
in order to produce coated nanoparticles in a reduced time and with accurate
capsule size. Final Act. 4; Ans. 5.
Appellants argue that the Examiner fails to establish a prima facie
case of obviousness because Redding' s pressurizing method performs a
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Application 13/483,783
different function than Kawahara's spray drying method and, therefore,
changes the Kawahara principle of operation. App. Br. 7-11. In particular,
Appellants argue that the principle of operation changes because Kawahara's
method requires the shell polymer to be in solution for spray dry coating the
particles, whereas Redding' s pressurizing method only works when the shell
material polymer is in the form of a film or globular suspension. Id. at 7-8.
Thus, argue Appellants, a skilled artisan would not have had an expectation
of success in pulse pressure coating the Kawahara materials. Id. at 8.
We are not persuaded because Appellants' arguments focus on a
single embodiment of Redding and ignore the teachings of the reference as a
whole. It is well established that a reference is not limited to its examples or
preferred embodiments, but, rather, the entire disclosure must be evaluated
for what it would have fairly suggested to one of ordinary skill in the art.
See Aferck & Co. v. Biocrafi Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989);
Jn re Boe, 355 F.2d 961, 965 (CCPA 1966). Focusing on Redding as a
whole, we concur with the Examiner's finding that Redding's shell materials
are not limited to films and suspensions. Ans. 4---5. Redding generally
discloses that a wide range of shell materials may be utilized in the
pressurizing methods, including shell materials used in prior aii techniques
such as spray drying. Redding Abstract, 7: 1-8, 22:29-36. Redding also
discloses that "no limitation is placed on the nature of the sheH material" and
explains that the liquid carrier medimn "may be the same medium used to
dissolve or partially dissolve the shell material." Id. at 4:59-----62, 15:27----3 L
\Ve also find unpersuasive Appellants' argument that substituting
Redding' s pressurizing method for Kawahara' s spray drying method
changes Kawahara's principle of operation. Appellants' argument is
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Application 13/483,783
premised on the notion that Redding's method limits the shell materials to
polymer films or suspensions. As explained above, however, Redding's
disclosure is not so limited and encompasses shell materials used in spray
drying, such as Kawahara's Nafion polymer solution. Kawahara's basic
principle of operation is coating a particle, and Appellants provide no basis
in the record supporting the position that utilizing Redding' s method on
Kawahara's materials would have failed to produce a coated particle.
Accordingly, we affirm the rejections of under 35 U.S.C. § 103.
Claims 46-48. Claim 46 recites that the carbon nanotubes are seeded
with one or more catalysts comprising materials selected from the group
consisting of, inter alia, Co and 1\1o. App. Br. 19. Claims 47 and 48 further
recite ratios of catalyst materials, including a Co-l'Vio catalyst. id. at E!---20.
The Examiner acknowledges that the combination of Kawahara and Redding
does not disclose seeding the nanotubes with a catalyst material, but finds
that Resasco teaches carbon nanotubes seeded with a Co-1\1o catalyst in
order to promote nanotube grovvth. Final Act. 6 (citing Resasco 4:45----65).
The Examiner concludes that it would have been obvious to utilize
Resasco's Co-Mo catalyst seed to seed the carbon nanotubes produced by
the combined Kawahara and Redding method in order to promote nanotube
growih. Id. The Examiner further finds that, although Resasco does not
expressly disclose the claimed ratio of Co to l'V1o, Resasco teaches that the
ratio affects the selective production of nanotubes. Id.
Appellants argue that the mere existence of certain Co/Mo ratios in
Resasco would not have led a skilled artisan to "the very specific catalyst
formulations" recited in claims 4 7 and 48. App. Br. 12. Appellants fuiiher
argue that Resasco does not disclose any result-effective variable. Id.
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Application 13/483,783
Appellants' argmnent is not persuasive because, as the Examiner
finds, Resasco discloses that the ratio of Co to I\/fo in the catalytic pmiicles
"affects the selective production of single-walled carbon nanotubes."
Resasco 5:7-----16. Such teachings are sufficient to demonstrate that the ratio
of Co to l'Vio would have been recognized as a result-effective variable. Jn re
Applied Afaterials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) ("A
recognition in the prior art that a property is affected by the variable is
sufficient to find the variable result-effective."). Thus. we find no reversible
/ '
error in the Examiner's analysis. In re Boesch, 617 F.2d 272, 276 (CCPA
1980) ("[D]iscovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art."). Accordingly, we
affin11 the rejection under 35 U.S.C. § 103.
Obviousness over Kawahara and Shine
Although the Examiner relies upon additional references in
combination with Kawahara and Shine in rejecting the appealed claims,
Appellants argue all of the rejections based on the combination of Kawahara
and Shine as one group. App. Br. 12-17. We, therefore, limit our
discussion to claim 43, which is representative. Independent claim 68 stands
or falls with claim 43 and the remaining dependent claims stand or fall with
their parent independent claim.
The Examiner's findings regarding Kawahara's disclosure are the
same as those discussed above in connection with the rejections over the
combination of Kawahara and Redding. See Final Act. 13.
Shine discloses a method for making core-shell particles (i.e., a
particle coating method) comprising mixing a core material with a shell
polymer in either a solid particulate or liquid form, supplying a supercritical
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carrier fluid capable of dissolving in the polymer under certain pressure and
temperature conditions, allowing the supercritical fluid to swell the polymer,
and rapidly releasing the pressure to solidify the polymer around the core
material. Shine Abstract, 3:27--41; see Final Act. 13. The Examiner
concludes that it would have been obvious to use Shine' s pressurizing
coating method in place of Kawahara's dissolving and spray drying coating
method to "predictably obtain[] the coated particle of Kawahara" because
Shine teaches pressurizing as a suitable alternative for encapsulating
particles with polymer material. Final Act. 13-14; Ans. 7.
Appellants raise essentially the same arguments for reversal of these
rejections that they raise with regard to the combination of Kawahara and
Redding. Compare App. Br. 7-11, with id. at 12-17. In particular with
respect to Shine, Appellants argue that the pressurizing method works only
when the shell material polymer is liquefied by, but not dissolved in, the
supercritical fluid carrier. Id. at 12-13. Thus, argue Appellants, Shine's
pressurized method is incompatible with Kawahara's materials and method.
Id. at 12, 14.
Appellants' arguments do not persuade us of reversible error in the
Examiner's rejection for the same reasons discussed in connection with the
combination of Kawahara and Redding. Again, Appellants' arguments
ignore the teachings of Shine as a whole. As the Exarniner finds, Shine
discloses that any polymer subject to swelHng by a supercritical fluid is
compatible with the pressurizing process and that selecting the appropriate
polymer/fluid combination suited for a particular application is within the
ordinary skill in the art. Ans. 6; Shine 6:40----7:35, 8:7----9. Implicit in the
Examiner's finding is that Kawahara's Nafion polymer is a polymer capable
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of swelling by a supercntlcal fluid. Although Appellants assert that
Kawahara's ionomer polymer "would have to be replaced" in Shine's
pressurization method, see .App. Br. 15, .Appellants point to no facts or
evidence in the record to support that assertion. Appellants' atton1ey
argument is not a substitute for evidence. In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984).
We also find unpersuasive Appellants' principle of operation
argument, because it is based on the unsuppmied assertion that Kawahara's
polymer is incompatible with Shine's pressurizing method. Appellants,
therefore, provide no basis in the record to support the position that
substituting Kawahara's spray drying method with Shine's pressurizing
method would have failed to produce a coated paiiicle. Accordingly, we
affirm the rejections under 35 U.S.C. § 103.
DECISION/ORDER
The Examiner's rejection of claims 43--67, 128-131, 133, and 134
under 35 U.S.C. § 112, second paragraph is reversed.
The Examiner's rejection of claims 68 and 134 under 35 U.S.C.
§ 102(b) is affirmed.
The Examiner's rejections of claims 43-71 and 128-134 under
35 U.S.C. § 103(a) are 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
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