Ex Parte Kawashima

Patent Trial and Appeal Board

Jul 20, 2016

13055275 (P.T.A.B. Jul. 20, 2016)

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.
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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.
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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
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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
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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.
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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
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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
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