Ex Parte Smithyman et al

Patent Trial and Appeal Board

Nov 28, 2016

12942863 (P.T.A.B. Nov. 28, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/942,863 11/09/2010 Jesse Smithyman 19585-0116 2540
29052 7590 11/30/2016
SUTHERLAND ASBILL & BRENNAN LLP
999 PEACHTREE STREET, N.E.
Suite 2300
ATLANTA, GA 30309
EXAMINER
MARKS, JACOB B
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
11/30/2016 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):
patent, docket @ sutherland.com
pair_sutherland @ firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JESSE SMITHYMAN, ZHIYONG LIANG,
JIM P. ZHENG, BEN WANG, and CHUN ZHANG
Appeal 2015-004544
Application 12/942,863
Technology Center 1700
Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
DONNA M. PRAISS, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL1
1 This decision makes reference to the Specification filed Nov. 9, 2010
(“Spec.”), the Final Office Action mailed Feb. 3, 2014 (“Final Act.”), the
Appeal Brief filed Sep. 3, 2014 (“Br.”), and the Examiner’s Answer mailed
Jan. 8, 2015 (“Ans.”).
Appeal 2015-004544
Application 12/942,863
STATEMENT OF THE CASE
This is an appeal under 35U.S.C. § 134 from the final rejection of
claims 1—3, 5, and 10-14. We have jurisdiction under 35 U.S.C. § 6.
The subject matter of this appeal relates to composite materials
including carbon nanotubes including one or more types of particles. Spec.
1:9—10. Claim 1 is illustrative (disputed elements italicized):
l. A method for making a composite material
comprising:
forming a first suspension comprising (i) carbon
nanotubes and (ii) first particles and/or fibers of interest;
filtering the first suspension to form a sheet which
comprises a network of the carbon nanotubes wherein the first
particles and/or fibers of interest are embedded in the network;
and
drying the sheet to form a free-standing sheet structure that
is free of polymeric binder.
The Examiner maintains, and Appellants2 appeal, the rejection of
claims 1—3 and 10-14 under 35 U.S.C. § 103(a) as unpatentable over Kang3
in view of Liu4 and the rejection of claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Kang and Liu in further view of Park.5 Appellants argue
the subject matter of independent claim 1, and rely on those same arguments
for dependent claims 2, 3, 5, and 10—14. Br. 13. In accordance with 37
2 Appellants identify the real party in interest as Florida State University
Research Foundation. Br. 2.
3 Kang et al., US 2007/0122712 Al, published May 31, 2007 (“Kang”).
4 Liu et al., US 2009/0098463 Al, published Apr. 16, 2009 (“Liu”).
5 Park et al., US 2009/0246613 Al, published Oct. 1, 2009 (“Park”).
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Application 12/942,863
C.F.R. § 41.37(c)(l)(iv), and based upon the lack of arguments directed to
the subsidiary rejection, claims 2, 3, 5, and 10-14 will stand or fall together
with independent claim 1 from which they depend.
OPINION
The dispositive issues for the prior art rejection are:
1. Did the Examiner err in finding that Kang does not teach away
from excluding a polymeric binder in its composite material
comprising carbon nanotubes and particles?
2. Did the Examiner err in finding that Kang discloses the filtering
step required by claim 1?
After review of the arguments and evidence presented by both
Appellants and the Examiner, we affirm the stated rejections.
It is the Examiner’s position that Kang in view of Liu suggests the
subject matter of claims 1—3 and 10-14 for the reasons stated on pages 2—3
of the Answer.
In the Appeal Brief, Appellants argue that Kang cannot be modified
by the teachings of Liu because “Kang discloses, unequivocally, that
composite materials containing carbon nanotubes and particles must include
a binder.” Br. 5. Appellants argue that Kang teaches a three component
composite material and “[t]he binder is not optional” because Kang states
“[t]he negative active material is combined with a binder.” Id. at 7
(emphasis added by Appellants) (quoting Kang | 59). According to
Appellants, this is a teaching away by Kang from combination with a binder-
free, particle-free material such as that taught by Liu. Id.
Appellants contend Liu also does not suggest omitting a binder in
Kang’s method “because Liu discloses a method for making a pristine array
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Application 12/942,863
of carbon nanotubes that is ‘essentially free’ of any impurities, including
particles and binders.” Id. at 6. Appellants quote paragraph 30 of Liu for its
particle-free teaching that “super-aligned array of carbon nanotubes formed
under the above conditions [shown in Fig. 2] is essentially free of
impurities, such as carbonaceous or residual catalyst particles.” Id. at 8
(emphasis added by Appellants). Appellants also quote paragraph 42 of Liu
for its binder-free teaching that “the carbon nanotube film is essentially free
of binder and includes a large amount of micropores” and assert that “[s]ince
the micropores are not affected by a binder,” Liu achieves the benefit of
“[t]he intercalation amount of lithium ions can be enhanced due to the
special microporous film structure of the anode.” Id. at 8 (quoting Liu 142).
Appellants assert that Liu’s “advantages are made possible by Liu’s binder-
free configuration, [and] the binder-free configuration, in turn, is made
possible by the fact that Liu’s films are particle-free.” Id. Appellants argue
that because active metal particles are indispensable to Kang, Kang teaches
away from its combination with any particle-free configuration such as Liu
and must include a binder. Id. Thus, Appellants contend that the rejection is
improper for “selecting and combining elements from the prior art without
considering what the references teach as a whole.” Id. at 6.
Appellants also contend that the combination of Kang and Liu does
not teach or suggest every element of claim 1 because “Kang discloses a
filtering step that does not result in a sheet of material.” Id. at 12.
The Examiner responds that “Kang teaches that a binder is used, not
that the binder must be used.” Ans. 4. The Examiner further responds that
“even if it was suboptimal to exclude a binder, such a teaching is not enough
to indicate that Kang teaches against the exclusion of a binder.” Id. at 5.
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Application 12/942,863
Regarding Liu, the Examiner responds that “Liu is not being offered as
teaching the activity material itself[,]” but, rather, for “the general
proposition that binder interferes with lithium ion adsorption in the active
material and should be removed so that adsorption is improved and
adsorption sites are not blocked.” Id. at 5—6. The Examiner finds that Liu’s
teaching of “[rjemoving a binder to improve adsorption would be applicable
to any lithium adsorbing active material” (id. at 5) and that “in the context of
Liu, the binder-free idea is separate from the particle-free idea” (id. at 6).
finally, the Examiner finds that “Kang teaches that the active material is
filtered (par. 55) and that the final product is a sheet comprising the active
material (par. 62, fig. 3).” Id. at 7. The Examiner further finds that claim 1
does not preclude further processing steps between the filtering and the
forming of the sheet and points out that “Liu is not offered as teaching the
filtering step.” Id.
We are not convinced that the Examiner improperly combined the
teachings of Kang and Liu for the reasons stated by the Examiner in the
Final Action and Answer, including the Response to Arguments section.
Ans. 2—7; Final Act. 3—5. We add the following primarily for emphasis.
Appellants’ arguments are not persuasive for a number of reasons.
First, Liu explicitly provides a reason to remove the binder from Kang’s
composite material. Liu 8 (“absorption ability of the carbon nanotubes is
restricted by the binder mixed therewith.”); Final Act. 3. Second, Appellants
merely assert without support that Liu’s “binder-free configuration, in turn,
is made possible by the fact that Liu’s films are particle-free.” Br. 8. While
Liu teaches a configuration that is both binder-free, particle-free, and
includes a large amount of micropores, Liu does not teach that the binder-
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free aspect is inexorably linked to being particle-free as well. Moreover, Liu
describes the effects of the binder and particles differently; the binder
inhibits adsorption while the particles reduce purity of the electrode material.
Liu 8, 30; Ans. 6. Third, Kang does not teach that its composite “must
include a binder” as asserted by Appellants. Br. 5. Rather, Kang discloses a
rechargeable lithium battery embodiment where the negative active material
is combined with a binder (Kang | 59), and provides, as nonlimiting
examples, polymeric binders {id. 161). Kang does not teach that the
polymeric binder is critical to the functioning of the composite or otherwise
teach away from its omission. A reference may be said to teach away when
a person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant. In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). That Kang uses binders in its
composite does not discourage the omission of a binder, particularly in view
of another benefit attributed to excluding the binder. “The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another.” Winner Int'l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n. 8 (Fed. Cir. 2000). Nothing in the record before us
shows that Kang’s method is incapable of forming a negative active material
in the absence of a polymeric binder such that the combination with Liu
would frustrate the principle of operation of Kang. The Examiner’s
undisputed finding that Kang discloses that the surfactant in the suspension
can act as a binder suggests that the binding function is not dependent solely
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Application 12/942,863
on a polymeric binder. See Ans. 2; Final Act. 3 (citing Kang 149). The
Examiner also states in the Response to Arguments that “even if it was
suboptimal to exclude a binder, such a teaching is not enough to indicate that
Kang teaches against the exclusion of a binder.” Ans. 5. Appellants have
not filed a Reply Brief to address this point. Fourth, the Examiner’s finding
that Kang’s method includes both filtering and forming a sheet is supported
by the record. Kang || 55, 62; Ans. 7. In addition, Appellants’ claim is
open ended, thus an additional step meets the claimed method.
For the foregoing reasons, we affirm all of the Examiner’s rejections
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(v).
AFFIRMED
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