Ex Parte Hashimoto et al

Patent Trial and Appeal BoardJan 31, 2019

13377207 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/377,207 12/09/2011 Hiroshi Hashimoto 22850 7590 02/04/2019 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 390732US99PCT 3251 EXAMINER WORRELL, KEVIN ART UNIT PAPER NUMBER 1789 NOTIFICATION DATE DELIVERY MODE 02/04/2019 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): patentdocket@oblon.com OBLONPAT@OBLON.COM iahmadi@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIROSHI HASHIMOTO, NAOKI SUGIURA, Y ASUYUKI FUJII, HIROKO MATSUMURA, TAKAHIROOKUYA, ISAO OOKI, MASAHIRO HATA, KOUKI WAKABAYASHI, AKIYOSHI KOGAME, KAZUNORI SUMIYA, and AKITO HATAYAMA1 Appeal2017-010622 Application 13/377,207 Technology Center 1700 Before ADRIENE LEPIANE HANLON, CHRISTOPHER C. KENNEDY, and MERRELL C. CASHION, JR., Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. Â§ 134(a) from an Examiner's decision finally rejecting claims 15-19 and 22-24 under 35 U.S.C. Â§ 103(a) as 1 The real party in interest is said to be Mitsubishi Rayon Co., Ltd. Appeal Brief dated January 11, 2017 ("Br."), at 1. Appeal2017-010622 Application 13/377,207 unpatentable over Venner2 in view of Hong et al. 3 and Manabe et al. 4 Claims 1- 14, 20, 21, 25, and 26 are also pending but have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. The Appellants disclose that "[t]he present invention relates to a carbon fiber bundle that has excellent mechanical characteristics." Spec. ,r 1; see also Spec. ,r 7. According to the Appellants' invention, an acrylonitrile precursor fiber bundle is densified, whereby few voids are formed within the fiber and a high performance carbon fiber is produced. Spec. ,r 3; see also Spec. ,r,r 25-26. Independent claim 15 is reproduced below from the Claims Appendix to the Appeal Brief. The limitation at issue is italicized. Claim 15. A carbon fiber bundle, wherein a strength of a strand impregnated with a resin is from 6000 MPa or more; a strand elastic modulus measured by an ASTM method is from 250 to 380 GPa; a ratio of the major axis and the minor axis, major axis/minor axis, of a cross-section of a single fiber perpendicular to the fiber-axis direction is 1.00 to 1.01; a diameter of a single fiber is 4.0 Âµm to 6.0 Âµm; and the number of voids having a diameter of from 2 nm to 15 nm present in the cross-section of a single fiber perpendicular to the fiber-axis direction is from 1 to 100. Br. 11. The obviousness rejection of claims 15-19 and 22-24 is sustained for the reasons set forth in the Final Office Action dated August 11, 2016 ("Final Act."), 2 Joseph G. Venner, Carbon and Graphite Fibers, Kirk-Othmer Encyclopedia of Chemical Technology (2000) ("Venner"). 3 KRI00371402 (Bl) ("Hong"). We rely on the machine translation dated November 15, 2015, which is of record in the instant Application. 4 JP 2004 225178 A, published August 12, 2004 ("Manabe"). 2 Appeal2017-010622 Application 13/377,207 and the Examiner's Answer dated June 2, 2017 ("Ans."). We add the following for emphasis. B. DISCUSSION 1. Claims 15, 17-19 and 22-24 The Examiner finds Venner teaches that carbon fibers such as intermediate modulus polyacrylonitrile-based (PAN-IM) fibers typically have a tensile strength of 4.1-7.0 GPa, a modulus of280-300 GPa, and a filament diameter of 5 Âµm, which overlap or fall within the claimed ranges. Final Act. 4. As for the claimed number of voids, the Examiner finds Venner "teaches that the strength of carbon fibers has increased over time from approximately 3 to 5-7 GP a due to optimization of the reduction of flaws such as pores." Final Act. 4 ( emphasis added). The Examiner concludes that the low number of voids claimed would have been obvious to one of ordinary skill in the art based on the teachings in Venner because "it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art." Final Act. 5 ( citing In re Boesch, 617 F.2d272 (CCPA 1980)). The Examiner finds Venner does not expressly disclose that the voids have a diameter of from 2 nm to 15 nm as recited in claim 15. Final Act. 4. The Examiner, however, finds Hong discloses that the mechanical strength of carbon fibers can be increased by increasing the pore or void diameter from not more than 20 Angstrom (2 nm) to at least 20 Angstrom (2 nm). Final Act. 4. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify the size of Venner's pores or voids as disclosed in Hong "in order to obtain carbon fibers having excellent properties such as electrical conductivity and high mechanical strength." Final Act. 4. 3 Appeal2017-010622 Application 13/377,207 The Appellants argue that "the prior art fails to enable the claimed carbon fiber bundle having a strength of 6000 MP a or more and a number of voids having a diameter of 2 to 15 nm in the cross-section of 1 to 100." Br. 3. More specifically, the Appellants argue: Br. 5. The record reflects that the properties of carbon fibers are greatly influenced by their production method .... Since the record reflects the effect of processing conditions can have on properties and the cited art fails to disclose any particulars of the method of production, the mere desire to reduce the number of voids of a particular size within a fiber cross-section fails to enable a density of 1 to 100 and therefore the claim is not rendered obvious. The Examiner finds that Venner "discloses a summary of carbon fiber manufacturing processes, disclosing several means for reducing flaws, such as avoiding contamination or impurities at certain stages, and avoiding excessive surface treatment." Ans. 5. The Examiner finds that Venner discloses, for example, that "temperatures exceeding 1500 Â°C can result in more flaw sensitive structures which may decrease strength because of defects such as trace metal contaminant, surface flaws or shear failure across misaligned cyrstallites [sic]." Ans. 5; see also Venner 4 (disclosing that "[s]pecial care is taken to avoid contamination or impurities that may form strength reducing flaws in the carbon fiber"); id. 7 ( disclosing that "[i]n the initial stage of carbonization, it is critical to control the off-gases that evolve from the fiber as it is heated[; e]xcessive heating rates result in void formation, structural disruption, and lower carbon fiber properties" (emphasis added)); id. 8 (disclosing that "excessive surface treatment depresses fiber tensile strength because of surface defects"). Based on those findings, the Examiner concludes that "Venner provides details that would enable one having skill in the art to optimize (decrease) the number of flaws in carbon 4 Appeal2017-010622 Application 13/377,207 fibers and to obtain the disclosed properties." Ans. 5. The Appellants do not respond to the Examiner's findings or the Examiner's conclusion based on those findings. The Appellants argue that paragraph 6 of the Sugiura Declaration dated April 15, 2016, "provides evidence that the claimed number of voids within a fiber cross-section are not inherent to a high strength carbon fiber." Br. 5 ( emphasis omitted). In particular, the Appellants argue that the Sugiura Declaration shows a high strength carbon fiber "ha[ ving] a number of voids of a diameter of 2 to 15 nm which is outside of the claimed range of 1 to 100." Br. 5 (emphasis omitted). The rejection of claim 15 is not based on inherency but rather is based on the obviousness of optimizing process parameters to reduce the number of voids in Venner's carbon fiber. Significantly, the Sugiura Declaration does not identify the process used to make the carbon fiber described in the Declaration. Therefore, the Appellants' argument is not persuasive of reversible error. The Appellants also argue that Hong is not reasonably pertinent to the problem faced by the inventor, i.e., "a carbon fiber bundle for obtaining fiber- reinforced plastic that has high mechanical characteristics." Br. 8; see also Br. 7 ("[i]n order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103, the reference must be analogous art to the claimed invention" (citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004))). The Appellants argue that they "have provided evidence of the strength of the fibers modified by Hong [] as having strengths of only 0.3 to 0.4 GPa, such that Hong [] would not have suggested to obtain 'high mechanical strength' in the high strength carbon fibers of Venner." Br. 7 (emphasis omitted). The Appellants, however, do not identify that evidence in the Appeal Brief. Therefore, the Examiner's finding that "Hong is in the same technical field of endeavor as Venner ... and the present application 5 Appeal2017-010622 Application 13/377,207 because Hong is directed to carbon fibers that have improved mechanical strength" (Ans. 6) stands unrebutted on this record. In sum, a preponderance of the evidence of record supports the Examiner's conclusion of obviousness. Therefore, the rejection of claim 15 is sustained. The Appellants do not present arguments in support of the separate patentability of any of claims 17-19 and 22-24. Therefore, the obviousness rejection of claims 17-19 and 22-24 also is sustained. 2. Claim 16 Claim 16 depends from claim 15 and recites that "the average diameter of the voids is 6 nm or less." Br. 11. The Appellants argue that"[ c ]laim 16 is separately patentable as an average diameter of voids of 6 nm or less is nowhere disclosed or suggested in the cited art of record." App. Br. 9. The Appellants, however, recognize that Hong discloses that the pores must be at least 2 nm. Br. 9. That range overlaps the claimed range and thus renders the claimed range prima facie obvious. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (a slight overlap in range results in a prima facie case of obviousness). The Appellants also argue that Hong does not suggest a number of pores of any particular size. Br. 9-10. The Examiner, however, relies on Venner, not Hong, to teach the claimed number of pores. See In re Keller, 642 F.2d 413,425 (CCP A 1981) (the test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art). In sum, the Appellants do not identify a reversible error in the Examiner's obviousness rejection of claim 16. Therefore, the rejection of claim 16 is sustained. C. DECISION The Examiner's decision is affirmed. 6 Appeal2017-010622 Application 13/377,207 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