Ex Parte KawashimaDownload PDFPatent Trial and Appeal BoardJul 20, 201613055275 (P.T.A.B. Jul. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/055,275 0112112011 23850 7590 07/20/2016 KRATZ, QUINTOS & HANSON, LLP 1420 K Street, N.W. 4th Floor WASHINGTON, DC 20005 FIRST NAMED INVENTOR Y asushi Kawashima 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. 110018 4268 EXAMINER DUNN, COLLEEN P ART UNIT PAPER NUMBER 1736 MAILDATE DELIVERY MODE 07/20/2016 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 Y ASUSHI KAWASHIMA Appeal2014-005534 Application 13/055,275 Technology Center 1700 Before PETER F. KRATZ, CATHERINE Q. TIMM, and N. WHITNEY WILSON, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner's final rejection of claims 1-3, 5, 6, 13, 15, and 16. We have jurisdiction pursuant to 35 U.S.C. § 6. Appellant's invention is directed to a superconductor comprising a substance composed of graphene and a hydrocarbon in the liquid state contacting the substance composed of graphene, an electromagnetic coil comprising such superconductor and a method of preparing the superconductor. Also, Appellant claims a superconductor comprising a carbon fiber and a hydrocarbon contacting the carbon fiber. Appellant acknowledges that room temperature superconductors have long been pursued; however, according to Appellant, studies prior to Appeal2014-005534 Application 13/055,275 Appellant's invention were based on expensive and complex oxide materials principally made of rare earth metals or graphite and resulting in materials requiring very low temperatures for the exhibition of any superconductivity properties (Spec. 1-2). Thus, Appellant acknowledges that the state of the art prior to the present invention was such that a protonic conductor exhibiting room-temperature superconductivity characteristics was not available but would have been "of infinite significance" if it were a state of the art possibility (Spec. 2-3). According to Appellant, the present invention provides for such a room-temperature superconductor "of infinite significance" that comprises graphene and a hydrocarbon ( alkane) proton donor made by bringing such materials into contact with each other by simple techniques such as dripping a hydrocarbon onto a graphene- containing substance (Spec. 3-15). Appellant reports that the present invention provides a perfect conductor of "zero-resistivity characteristics" that is a "long-awaited landmark solution for humanity" (Spec. 5, 11. 10-16). Claims 1, 3, and 6 are illustrative and reproduced below: Claim 1: A superconductor comprising: (a) a substance composed of graphene; and (b) a hydrocarbon in a liquid state contacting the substance composed of graphene. Claim 3: A. superconductor comprising: (a) carbon fiber and (b) a hydrocarbon contacting the carbon fiber. Claim 6: A method for producing a superconductor, comprising bringing a hydrocarbon in a liquid state into contact with a substance composed of graphene. 2 Appeal2014-005534 Application 13/055,275 The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Alls opp Homsy Matsui Betts et al. J amet et al. Sumida et al. Smalley et al. us 4,103,099 us 4, 118,532 us 4,198,382 us 4,341,830 us 4,525,337 us 4,555,446 US 6,683,783 Bl July 25, 1978 Oct. 3, 1978 Apr. 15, 1980 July 27, 1982 ("Betts") June 25, 1985 ("Jamet") Nov. 26, 1985 ("Sumida") Jan.27,2004 ("Smalley") The Examiner maintains the following grounds of rejection: 1. Claim 5 stands rejected under 35 U.S.C. § 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. 2. Claims 1-3, 5, 6, 13, 15, and 16 stand rejected under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement. 3. Claims 1-3, 5, 6, 13, 15, and 16 stand rejected under 35 U.S.C. § 112, first paragraph as failing to comply with the enablement requirement. 4. Claims 1-3, 5, 6, 13, 15, and 16 stand rejected under 35 U.S.C. § 101 because the disclosed invention is inoperative and therefore lacks utility. 5. Claims 1, 2, 5, and 6 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Smalley. 6. Claim 3 stands rejected under 35 U.S.C. § 102(b) as being anticipated by Homsy. 3 Appeal2014-005534 Application 13/055,275 7. Claim 3 stands rejected under 35 U.S.C. § 102(b) as being anticipated by Allsopp. 8. Claim 3 stands rejected under 35 U.S.C. § 102(b) as being anticipated by Matsui. 9. Claims 3 and 15 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Betts. 10. Claim 3 stands rejected under 35 U.S.C. § 102(b) as being anticipated by Jamet. 11. Claim 3 stands rejected under 35 U.S.C. § 102(b) as being anticipated by Sumida. 12. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Smalley. 13. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Homsy, Allsopp, Matsui, Betts, Jamet, or Sumida. After a careful review of the opposing positions articulated by Appellant in the Appeal Brief and the Examiner in the Final Office Action and in the Answer concerning the rejections before us, including the evidence relied upon by the Examiner and Appellant, we determine that the Appellant's arguments are insufficient to identify reversible error in any of the Examiner's stated rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we affirm the rejections set forth by the Examiner in the Examiner's Answer and in the Final Office Action. We offer the following for emphasis. Concerning the Examiner's rejection of claim 5 under the second paragraph of 35 U.S.C. § 112, Appellant's observation that claim 5 should 4 Appeal2014-005534 Application 13/055,275 be amended to change its dependency does not serve as the presentation of an argument identifying substantive error in the Examiner's rejection (Br. 9; see Ans. 4, 11). Accordingly, we affirm the Examiner's Rejection 1 as identified above; that is, the rejection of claim 5 under the second paragraph of 35 U.S.C. § 112. Regarding Rejection 4, the Examiner maintains that all of the appealed claims fail to pass muster under 35 U.S.C. § 101 for lack of a credible utility (inoperative for the disclosed utility of being a room temperature superconductor) given that currently known and conventional scientific theory and principles recognized by the scientific community indicate that such room temperature superconductors fail to exist and Appellant's failure to reasonably establish such an otherwise apparently unrecognized (incredible) utility for their invention based on the minimal disclosures and uncorroborated experiments reported in the subject Specification (Ans. 5; Final Office Act. 4, 8-11; Spec. 1--4). Appellant does not argue that the claimed subject matter has another utility that is credible; rather, Appellant argues that tests were conducted (at room temperature) to verify the presence of the Meissner effect and zero or near zero resistance, properties said to be associated with superconductivity at room-temperature (Br. 1 O; Spec. 23-29). As pointed out by the Examiner, however, the Specification data does not demonstrate a perfect conductor having zero resistance and confirming the presence of room-temperature superconductivity marked by a Meissner effect, noting that Appellant's Specification provides that perfect diamagnetism, which is due to zero resistance, is not observed (Ans. 9-12; Spec. 29, 11. 23-26). Moreover, the Examiner observes that Appellant has 5 Appeal2014-005534 Application 13/055,275 not corroborated or verified that the scientific community would have recognized that Appellant provides room-temperature superconductors, the "long-awaited landmark solution for humanity" (Ans. 11-12; Spec. 5, 11. 10- 16). In our view, the Examiner has established a reasonable basis for questioning the objective truth of Appellant's stated and claimed utility. The Examiner has reasonably established that the asserted utility of the claimed invention as detailed in the subject Specification "borders on the incredible" in light of contemporary knowledge of this art as of the date of filing of this application as set forth by Appellant in the Background portion of the Specification. Under such circumstances, the burden shifts to Appellant to furnish credible objective evidence of the asserted utility/operability of the claimed invention. See In re Swartz, 232 F.3d 862, 864 (Fed Cir. 2000). "[W]here an applicant predicates utility for the claimed invention on allegations of the sort here which are or border on the incredible in light of contemporary knowledge of the particular art, those allegations must be substantiated by acceptable evidence." Application of Ferens, 417 F.2d 1072, 1074 (CCPA 1969). In this regard, it is well settled that the PTO may establish a reason to doubt an asserted utility when the written description "suggest[ s] an inherently unbelieveable undertaking or involve[ s] implausible scientific principles." In re Brana, 51F.3d1560, 1566 (Fed. Cir. 1995). From our perspective, the Examiner provides a reasonable basis for questioning the objective truth of Appellant's stated utility/operability and the lack of utility rejection is not based on a mere presumption of lack of utility I operability. 6 Appeal2014-005534 Application 13/055,275 On this record, we sustain Rejection 4. We likewise sustain the rejections of the appealed claims under§ 112, 1st paragraph (Rejections 2 and 3) as lacking enablement and lacking written descriptive support. It is well-settled that "[t]he scope of the claims must be less than or equal to the scope of the enablement." Nat'! Recovery Techs., Inc. v. Magnetic Separation Sys, Inc., 166 F.3d 1190, 1195-96 (Fed. Cir. 1999). In the record before us, Appellant does not contend that their claims exclude the embodiments disclosed as having incredible or borderline incredible utility. As a consequence, we sustain the 1st paragraph rejections because the scope of all of the appealed and rejected claims encompasses an incredible utility and therefore exceeds the scope of enablement. Correspondingly, Appellant has not demonstrated possession of the full scope of the invention, including a product with room-temperature superconductivity properties for substantially similar reasoning. This would reasonably lead one of ordinary skill in the art to conclude Appellant was not in possession of the claimed subject matter so as to satisfy the written description requirement. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane) ("[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.") It follows that we shall also sustain Rejections 2 and 3. As for the Examiner's anticipation Rejections 5 through 11, Appellant states what Appellant believes each of the applied references may describe followed by a conclusory assertion that the disclosure of each of the applied 7 Appeal2014-005534 Application 13/055,275 references "does not anticipate the present invention" without particularly identifying where or how Appellant believes that the Examiner may have erred in any of the Examiner's separately stated anticipation rejections for any of the rejected claims (Br. 10-14). In this regard, arguments not made by Appellant in the Brief are waived. It follows that we shall sustain Rejections 5 through 11. As determined by the Examiner (Ans. 16), Appellant presents no arguments contesting the Examiner's obviousness rejections (Rejections 12 and 13) (see generally Br. 10-15). Accordingly, we summarily sustain Rejections 12 and 13. CONCLUSION The Examiner's decision to reject the appealed claims 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 8 Copy with citationCopy as parenthetical citation