Ex Parte Zhamu et al

Patent Trial and Appeal BoardOct 23, 2012

11899008 (P.T.A.B. Oct. 23, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/899,008 09/04/2007 Aruna Zhamu 6914 7590 10/23/2012 Bor Z. Jang 9436 Parkside Drive Centerville, OH 45458 EXAMINER SCHIFFMAN, BENJAMIN A ART UNIT PAPER NUMBER 1742 MAIL DATE DELIVERY MODE 10/23/2012 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 ARUNA ZHAMU, JUNJUN SHI, JIUSHENG GUO, and BOR Z. JANG ____________ Appeal 2011-005131 Application 11/899,008 Technology Center 1700 ____________ Before EDWARD C. KIMLIN, LINDA M. GAUDETTE, and MARK NAGUMO, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1-22. Claim 1 is illustrative: 1. A method for recompressing expanded or exfoliated graphite to produce a less anisotropic, flexible graphite foil having a thickness-direction electrical conductivity no less than 15 S/cm, said method comprising: a) providing a mixture of expanded or exfoliated graphite flakes and particles of non-expandable graphite or carbon, wherein said non- expandable graphite or carbon particles serve as an isotropy-promoting agent and are in the amount of between about 3% and 70% by weight based on the total weight of said particles and said exfoliated graphite; Appeal 2011-005131 Application 11/899,008 2 b) compressing said mixture in at least a first direction to a pressure within the range of from about 0.04 MPa to about 350 MPa into a first cohered mixture; and c) compressing said first cohered mixture in a second direction, different from the first direction, to a pressure sufficient to produce said flexible graphite foil having a bulk density within the range of from about 0.1 g/cm3 to about 2.0 g/cm3. The Examiner relies upon the following references as evidence of obviousness: Mercuri US2002/0164483 A1 Nov. 7, 2002 Egami US 2005/0116376 A1 Jun. 2, 2005 Zhamu (SN 11/800,730) US 2008/0279710 A1 Nov. 13, 2008 Appellants’ claimed invention is directed to a method for recom- pressing expanded graphite in order to produce a less anisotropic flexible graphite foil having the recited electro conductivity in the thickness direction. The method entails, inter alia, compressing a mixture of expanded graphite flakes and particles of non-expandable carbon. The non- expandable carbon particles serve as an isotropy-promoting agent, i.e., it reduces the anisotropic nature of the graphite foil. Appealed claims 1-22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mercuri in view of Egami. Claims 1, 9, and 14 stand provisionally rejected on the grounds of non-statutory obviousness- type double patenting over claims 1, 14, and 31 of co-pending application US Serial Number 11/800,730 in view of Mercuri.1 1 Appellants have not substantively challenged the Examiner’s provisional rejection but submit that “[a]n appropriate assignment and a new terminal Appeal 2011-005131 Application 11/899,008 3 Appellants have not separately argued any particular claim on appeal. Accordingly, all of the appealed claims stand or fall together with claim 1. We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we agree with the Examiner that Appellants have not rebutted the Examiner’s rationale in support of the conclusion of obviousness. Accordingly, we will sustain the Examiner’s rejection for essentially those reasons expressed in the Answer, and we add the following primarily for emphasis. There is no dispute that Mercuri, like Appellants, discloses controlling the anisotropic characteristics of a flexible graphite foil by compressing expanded graphite to produce a foil having a thickness-direction conductivity of 70 S/m, nor do Appellants dispute the Examiner’s findings with respect to the Mercuri disclosure set forth in the Answer in the paragraph bridging pages 4-5. As acknowledged by the Examiner, Mercuri does not provide a mixture of expanded graphite and particles of non-expandable carbon, as presently claimed. However, it is the Examiner’s position that Egami evidences the obviousness of adding non-expandable carbon particles to the expanded graphite flakes of Mercuri “in order to increase the conductivity in all direction [sic, directions] and thus increase the isotropy of the resulting foil” (Ans. 8, second para.). Appellants have not refuted the Examiner’s reasoning set forth at page 9 of the Answer that the addition of non- expanded carbon particles to the expanded graphite of Mercuri would disclaimer will be filed in due course” (Prin. Br. 10, first para.). Accordingly, we will summarily affirm the Examiner’s provisional rejection. Appeal 2011-005131 Application 11/899,008 4 increase the conductivity of the article in all directions and, thereby, result in an increase in the isotropy of the anisotropic foil. Indeed, Appellants acknowledge that the addition of carbon black to a composition comprising expanded graphite would naturally increase the conductivity of the material (Prin. Br. 17, second para.). The principal argument advanced by Appellants is that the graphite foil of Mercuri does not include the resin of Egami, and that “in the presence of the resin in the Egami process, the conductive particles cannot effectively orient the expanded or exfoliated graphite flakes and thereby reduce the anisotropy” (Prin. Br. 11, first para.). Appellants submit that “the liquid resin used in the plastic molding process (e.g., injection molding) of Egami could not assist in controlling the orientation of expanded graphite flakes” (Prin. Br. 12, first para.). Appellants further state that “[t]here is no plausible theory or concept in the field of plastic composite processing to suggest that carbon black could perform such a function in a resin fluid flow state inside a molding machine” (id.). The flaw in Appellants’ argument is that it does not address the thrust of the Examiner’s rejection. As explained by the Examiner, the rejection is not premised upon modifying the foil of Mercuri by adding resin and non- expandable carbon. Rather, as set forth above, the Examiner reasons that it would have been obvious for one of ordinary skill in the art to add non- expandable carbon to the expanded graphite of Mercuri in order to increase conductivity in all directions and reduce the anisotropic characteristics of the foil, bearing in mind that it is a goal of Mercuri to provide a finished graphite article having a predetermined, desired anisotropic ratio. While Appeal 2011-005131 Application 11/899,008 5 Appellants point out that Mercuri teaches other ways of controlling the anisotropic ratio, Appellants have presented no argument for why it would have been nonobvious to one of ordinary skill in the art to add non- expandable carbon to achieve such control. In the absence of such argument, the Examiner’s position stands unrebutted. Appellants also argue that “Egami does not teach combined operations of compression in at least two directions, or a combination of a compression operation and a subsequent shaping operation” (Prin. Br. 12, second para.). However, as noted by the Examiner, Egami is not relied upon for this feature. Appellants also submit that “the data summarized in Table 1 (Example 1) of the instant application provides one of the many unambiguous evidences to prove that the non-expandable graphite or carbon particles are very effective in promoting isotropy and enhancing thickness- direction conductivity” (Prin. Br. 15, last para.). However, we agree with the Examiner that Appellants have not established that the Specification results would have been considered truly unexpected by one of ordinary skill in the art. In re Merck & Co., 800 F.2d 1091, 1099 (Fed. Cir. 1986); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1072). Moreover, Appellants have not refuted the Examiner’s position that the results appear to be expected inasmuch as the addition of non-expandable carbon would be expected to increase the thickness-direction conductivity as well as the isotropy of the article. It is well-settled that just as unexpected results are evidence of nonobviousness, expected results are evidence of obviousness. The Examiner also notes that Appellants have “submitted no evidence, Appeal 2011-005131 Application 11/899,008 6 commensurate in scope with the claims, to suggest that the increase in isotropy is a result of the orientation of the expanded graphite” (Ans. 10, first para.). Appellants maintain in the Reply Brief that the Examiner does not address the point that carbon black is essentially a conductive filler in Egami’s resin molding, whereas the carbon black of the claimed graphite foil modifies the orientation of the graphene layers (page 1). However, this argument misses the point of the Examiner’s rejection, namely, that one of ordinary skill in the art would have found it obvious to use a mixture of expanded graphite and non-expanded carbon, as taught by Egami, in order to controllably increase the conductivity and isotropy of Mercuri’s foil. In conclusion, based on the foregoing and the reasons well stated by the Examiner, the Examiner’s decision rejecting the appealed claims is affirmed. The decision of the Examiner 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)(1)(iv). AFFIRMED cam