Ex Parte Reneker et al

Patent Trial and Appeal Board

Apr 29, 2016

12063266 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/063,266 05/05/2008 Darrell Reneker
26360 7590 04/29/2016
Renner Kenner Greive Bobak Taylor & Weber Co., LPA
First National Tower, Suite 400
106 South Main Street
Akron, OH 44308-1412
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.
UOA.569.US 6040
EXAMINER
KEMMERLE III, RUSSELL J
ART UNIT PAPER NUMBER
1741
MAILDATE DELIVERY MODE
04/29/2016 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 DARRELL RENEKER, GEORGE CHASE,
WORAPHON KATAPHINAN, and PRATHYUSHA KATTA
Appeal2014-009880
Application 12/063 ,266
Technology Center 1700
Before PETER F. KRATZ, WESLEY B. DERRICK, and
CHRISTOPHER L. OGDEN, 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, 7-13, 16, 17, and 21-27. We have
jurisdiction pursuant to 35 U.S.C. § 6.
Appellants' claimed invention is directed to a process for making a
flexible ceramic composition.
Claims 1 and 13 are illustrative and reproduced below:
1. A process for making a flexible ceramic composition
comprising the steps of:
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Application 12/063,266
(A) mixing at least one sol gel ceramic component, or
precursor thereof, with at least one electrospinnable polymer thereby
forming an electrospinnable solution;
(B) electrospinning the solution into fibers; and
(C) subjecting the fibers to a heating process in a suitable
atmosphere so that most and/or all of the carbonaceous component in the
fibers oxidizes thereby yielding flexible ceramic fibers,
wherein the heating process of Step (C) includes raising the
temperature to which the fibers are subjected from room
temperature to a temperature of at least about 700°C.
13. A process for making a flexible ceramic composition
comprising the steps of:
(~\ 1 1 1 IJJ m1xmg at ieast one soi ge1 ceramic component, or
precursor thereof, with at least one electrospinnable polymer thereby
forming an electrospinnable solution;
(ii) aging the electrospinnable solution for a period of at
least 14 days;
(iii) electrospinning the solution into fibers; and
(iv) subjecting the fibers to a heating process in a suitable
atmosphere so that most and/or all of the carbonaceous component in the
fibers oxidizes thereby yielding flexible ceramic fibers,
wherein the Step (iv) includes subjecting the fibers to a temperature
of at least about 700°C.
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Application 12/063,266
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Shih et al.
Chen et al.
us 5,573,718
US 2008/0160856 Al
Nov. 12, 1996
Jul. 3, 2008
Dan Li & Younan Xia, Fabrication of Titania Nanofibers by
Electrospinning, Department of Chemistry, University of Washington,
Seattle, Washington 98195-1700.
R. Teye-Mensah et al., Erbia-modified electrospun titania nanofibres
for selective infrared emitters, J. Phys.: Condens. Matter 16 (2004) 7557-
7564.1
The Examiner maintains the following grounds of rejection:
1. Claims 1-3, 7-9, and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Li in view of Mensah.
2. Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Li in view of Mensah and Chen.
3. Claims 13, 16, 17, and 21-27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Li in view of Mensah and Shih.
4. Claims 24 and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Li in view of Mensah, Shih, and Chen.
We affirm Rejections 1 and 2 and we reverse Rejections 3 and 4. Our
reasoning follows.
Rejections 1 and 2
Concerning Rejection 1, Appellants argue the rejected claims together
as a group. We select claim 1 as the representative claim on which we focus
1 Both the Examiner and Appellants refer to this reference as "Mensah" and
we do likewise.
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Application 12/063,266
in deciding this appeal as to Rejection 1. Furthermore, our disposition of
Rejection 2 follows from our disposition of Rejection 1. 2
The Examiner has found that "Li discloses a method of forming
Titania nanofibers comprising mixing poly( vinyl pyrrolidone) (PVP) and
titanium dioxide to form a spinnable gel" wherein the "gel is then injected
through a needle into a strong electric field, which forms it into fibers"
(Final Office Act. 2). In addition, the Examiner has determined that Li
teaches that the "fibers are then calcinated at about 500°C, and result in
fibers having an average diameter in the range of 20 to 200 nm (See
abstract)" (id.). As found by the Examiner, "Li discloses that the spun fibers
were left in air (page 556)" and the Examiner reasons that "since no heating
is applied at this step one skilled in the art would understand that the fibers
would be at room temperature at some point prior to the firing step, and
would therefore have to be heated from room temperature to the calcination
temperature" (id.).
As for the heating temperature required by claim 1, the Examiner
turns to Mensah for teaching a heating temperature of 900°C for pyrolyzing
PVP used in electrospinning titania nano fibers (Final Office Action 3;
Mensah, Abstract, pp. 7558-7559). The Examiner maintains that one of
ordinary skill in the art would have been led to use the heating temperature
of Mensah in Li to provide for the effective pyrolysis of PVP, as taught by
Mensah because Li employs the same PVP polymer (id. 3).
Appellants focus on step C of claim 1 and argue that the recited
requirement of "raising the temperature to which the fibers are subjected
2 Rejection 2 pertaining to certain dependent claims is not separately argued.
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Application 12/063,266
from room temperature to a temperature of at least about 700°C" means that
the temperature of the heating environment to which the fibers are subjected,
such as an oven, is raised from room temperature to a temperature of at least
about 700°C, not that the temperature of the fibers themselves must be so
raised (Br. 4--5; claim 1). 3
Contrary to Appellants' argument, however, representative claim 1 is
not so limited. In this regard, claim 1 employs open "comprising"
transitional term language prior to setting forth steps A through C and in
argued step C employs the open transitional term "including" in setting forth
the heating process "raising temperature" proviso and does so without
defining or limiting the materials or structures that were subjected to having
a temperature raised from room temperature to 700°C, without limitation as
to the timing of such temperature rise, and/or without limitation as to how
the change in temperature (temperature rise) is measured.
While the subject Specification describes an embodiment wherein the
fibers are gradually heated from about room temperature to about 7 00°C in
approximately six hours, representative claim 1 contains no particular
limitation as to the heating rate that the fibers are subjected to and/or the
total time taken to heat the fibers from one temperature to another
temperature, much less a particular limitation as to a heating time or rate of
heating applicable to any heating atmosphere to which the fibers may be
subjected to during the heating process step C (paragraph bridging Spec. 7-
3 Our references to pages of the Brief herein are to the page numbers the
Brief would display if the pages of the Brief had been numbered employing
the numeral 1 for the first page and with the subsequent pages numbered
sequentially in rising whole number numeral order.
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Application 12/063,266
8). 4 It is well settled that giving the claims their broadest reasonable
construction in light of the Specification as they would have been interpreted
by one of ordinary skill in the art is not accomplished by attempting to
import an embodiment that may be described in the Specification into the
claims by mere argument and without appropriate amendment of the
affected claim.
Consequently, Appellants' argument is premised on a faulty claim
construction and has no merit in identifying substantive error in the
Examiner's obviousness rejection of representative claim 1. As explained
by the Examiner, even if Li were limited to the use of a pre-heated oven for
calcining the fibers, the temperature to which the fibers are subjected would
have nonetheless been raised by Li based on the act of placing the fibers into
the oven (Ans. 2-3).
It follows that we shall sustain Rejections 1 and 2.
Rejections 3 and 4
We reverse Rejections 3 and 4 substantially for reasons argued by
Appellants with respect to Rejection 3 (Br. 7-9). In this regard, claim 13,
the sole independent claim subject to Rejection 3 (Rejection 4 pertains to
certain dependent claims) requires the step of "aging the electrospinnable
solution [formed in step (i)] for a period of at least 14 days" (claim 13, step
ii).
4 As with the Appeal Brief, Appellants fail to provide the Specification with
numbered pages. Accordingly, our references to page numbers of the
Specification employs the same methodology we described for our
references to pages of the Appeal Brief.
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The Examiner relies on Shih for teaching or suggesting a step of aging
a sol to increase its viscosity to a spinnable level and the Examiner maintains
that providing for such an aging step in Li for adjusting viscosity to the
desired viscosity, even if such took 14 or more days, would have been
obvious to one of ordinary skill in the art (Final Office Action 3; Shih,
Abstract).
As argued by Appellants, however, Shih does not teach aging an
electrospinnable solution as required by claim 13 but teaches to age a
solution so as to render it electrospinnable (Br. 7-8; Shih, col. 2, 11. 15-21 ).
Hence, the Examiner has not furnished an apparent reason for one of
ordinary skill in the art to modify the process of Li by aging the
electrospinnable solution of Li for a time as required by claim 13 based on
the teachings of Shih as to how to increase viscosity to make a non-electro
spinnable solution, electrospinnable. In this regard, "rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness" being asserted.
In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (quoted with approval in
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). After all,
rejections based on§ 103(a) must rest on a factual basis with these facts
being interpreted without hindsight reconstruction of the invention from the
prior art. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Accordingly, we reverse the Examiner's obviousness rejection of the
appealed claims as set forth in Rejection 3.
As for Rejection 4 pertaining to certain claims that depend from claim
13, the Examiner has not established how the additionally applied teachings
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of Chen pertaining to certain features of the dependent claims subject to
Rejection 4 overcomes the deficiency in the base Rejection 3.
It follows that we shall reverse Rejection 4.
CONCLUSION
The Examiner's decision to reject claims 1-3, 7-9, and 12 under 35
U.S.C. § 103(a) as being unpatentable over Li in view of Mensah and to
reject claims 10 and 11under35 U.S.C. § 103(a) as being unpatentable over
Li in view of Mensah and Chen is affirmed.
The Examiner's decision to reject claims 13, 16, 17, and 21-27 under
35 U.S.C. § 103(a) as being unpatentable over Li in view of Mensah and
Shih and to reject claims 24 and 25 under 35 U.S.C. § 103(a) as being
unpatentable over Li in view of Mensah, Shih, and Chen is reversed.
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-IN-PART
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