Yong-Jihn KIM

Patent Trials and Appeals Board

Mar 1, 2022

2021001756 (P.T.A.B. Mar. 1, 2022)

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. 15/570,553 10/30/2017 Yong-Jihn KIM 1091.4 - Dr. Kim (RRM) 7074 69656 7590 03/01/2022 EUGENIO J. TORRES 221 PLAZA BUILDING PONCE DE LEON, SUITE 403 SAN JUAN, PR 00917 EXAMINER REDDY, KARUNA P ART UNIT PAPER NUMBER 1764 NOTIFICATION DATE DELIVERY MODE 03/01/2022 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): ETORRES@ferraiuoli.com Patent@ferraiuoli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YONG-JIHN KIM Appeal 2021-001756 Application 15/570,553 Technology Center 1700 Before JEFFREY B. ROBERTSON, SHELDON M. McGEE, and JANE E. INGLESE, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-9 and 11-19.3 Appeal Br. 9. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 This Decision includes citations to the following documents: Specification filed October 30, 2017 (“Spec.”); Final Office Action entered March 23, 2020 (“Final Act.”); Appeal Brief filed August 5, 2020 and Response to Notification of Non-Compliant Appeal Brief filed August 17, 2020 (Appendix I, Claims Appendix) (“Appeal Br.”); and Examiner’s Answer entered October 7, 2020 (“Ans.”). 2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the inventor, Yong-Jihn Kim, as the real party in interest. Appeal Br. 4. 3 Claim 10 has been withdrawn from consideration. Final Act. 1. Appeal 2021-001756 Application 15/570,553 2 CLAIMED SUBJECT MATTER Appellant states the invention relates to a new type of conductive polymer or plastic with a high melting point over 1,000 °C. Spec. 1. Claim 1, the only independent claim on appeal, is reproduced below and is illustrative of the claimed subject matter (Appeal Br., Appendix I, Claims App.): 1. A conductive polymer or plastic with a high melting point over l,000°C, based on Carbon, Mg, and comprising magnetic ions and nonmagnetic ions, wherein it forms an amorphous polymer or plastic phase and its resistivity is varied from 10-6 ohmcm to 1018 ohmcm. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Dou et al. (“Dou”) US 7,838,465 B2 Nov. 23, 2010 Kim US 8,390,293 B2 Mar. 5, 2013 Jiao CN 101723672, English translation of record. REJECTIONS 1. Claims 1-3, 5-9, and 11-19 are rejected under 35 U.S.C. § 103 as being unpatentable over Jiao and Kim. Final Act. 3-5. 2. Claims 1-9 and 11-19 are rejected under 35 U.S.C. § 103 as being unpatentable over Dou and Kim. Final Act. 5-6. Appeal 2021-001756 Application 15/570,553 3 OPINION We confine our discussion to claim 1, which is representative of the arguments made by Appellant with respect to the rejections on appeal. 37 C.F.R. § 41.37(c)(1)(iv)(2013). Rejections 1 and 2 The Examiner’s Rejections In rejecting claim 1 as unpatentable over Jiao or Dou in view of Kim, the Examiner found Jiao discloses a mixture of carbon powder and magnesium powder that are mixed, pressed into a block, and heated at 950 °C to obtain a sintered material containing magnesium and carbon. Final Act. 3. The Examiner found Dou discloses superconducting materials comprising magnesium, boron, silicon, and carbon, where a powder of magnesium, amorphous boron, and silicon carbide are mixed and heated to 950 °C. Id. The Examiner found that both Jiao and Dou fail to disclose the conductive polymer includes magnetic and non-magnetic ions, and the melting and resistivity properties recited in claim 1. Id. at 3, 5. The Examiner found that Kim discloses a superconductor with enhanced high magnetic field properties, that includes magnetic impurities (magnetic ions) to enhance pinning properties by producing pinning centers in super conductors, and non-magnetic disorders (non-magnetic ions) that compensate for negative effects of magnetic impurities on the high field properties. Final Act. 3, 5. The Examiner determined that it would have been obvious to have included magnetic ions and non-magnetic ions as disclosed in Kim in the superconductors of either Jiao or Dou for the advantages disclosed in Kim. Final Act. 4-6. The Examiner determined Appeal 2021-001756 Application 15/570,553 4 that because Jiao and Dou are made by similar processes as disclosed in the present Specification, one of ordinary skill in the art would have had a reasonable basis to expect that the superconductor in view of either Jiao or Dou in view of Kim would have the melting point and resistivity properties recited in claim 1. Id. Appellant’s Arguments Appellant argues that the Examiner has not provided sufficient support for the position that the products in Jiao and Dou are made by a similar process with similar materials to support the position that the melting point and resistivity requirements in claim 1 would have been met. Appeal Br. 12-13. In particular, Appellant contends that Jiao requires boron and Dou requires silicon, whereas claim 1 does not require such elements. Id. at 13. Thus, Appellant contends that the superconducting materials in Jiao and Dou have properties that materially differ from the claimed conductive polymer. Id. at 13-14. Appellant also contends that neither Jiao nor Dou indicates that the conductivity of the superconductors disclosed therein would fall within the claimed resistivity range. Id. at 14. Discussion We are not persuaded by Appellant’s arguments. In particular, we do not accept Appellant’s premise that the Examiner’s reasoning is conclusory and not based on reasoned explanation. Appeal Br. 12-13. As discussed above, the Examiner provided a clear explanation supported by factual evidence that Jiao and Dou disclose similar materials produced using similar processes under similar conditions to those described in Appellant’s Appeal 2021-001756 Application 15/570,553 5 Specification in order to support the position that the recited melting points and resistivity would be met. As to Jiao, Jiao discloses a mixture of dry magnesium powder, boron powder, and amorphous or nano carbon powder that is heated to 950 °C, which is consistent with the conditions for the method described in the Specification. Jiao, p. 5, Ex. 2; Spec. 6, ll. 6-21. Although Appellant argues Jiao discloses boron as an additional element and as such is not made by a similar process as the conductive polymer recited in claim 1, as the Examiner correctly observes, dependent claim 4 recites the presence of boron. Ans. 8. Thus, Appellant’s argument is not commensurate in scope with the claims, which clearly encompass materials including boron such as those disclosed in Jiao. As to Dou, Dou discloses mixing magnesium, boron, and silicon carbide additive at 950 °C. Dou, col. 7, ll. 25-43, Ex. 1. Even assuming that the presence of silicon would have an effect on the melting point of the resulting material, we are not persuaded that such an effect would result in melting points outside the range recited in claim 1. That is, as the Examiner points out, Duo discloses embodiments where the proportions of carbon and magnesium fall within the ranges recited in dependent claims 2 and 3. Ans. 7-8; Duo, col. 7, ll. 8-42. In addition, while claim 1 recites a “high melting point over 1,000°C,” the Specification does not describe the actual melting point of the obtained materials, stating only that “[t]he melting point seems to be over 1,200 °C,” and “the 3,000 °C Benzomatic torch was used to melt those polymers without success, confirming the very high melting point.” Spec. 7, l. 19 - 8, l. 2. Thus, the melting points of the materials recited in the claims without silicon appear to be much higher than the 1,000 °C lower Appeal 2021-001756 Application 15/570,553 6 limit recited in claim 1, such that given the similarities between the amounts of common components and conditions used to produce the materials in the prior art and the claims, we are of the view that the preponderance of the evidence supports the Examiner’s position that the prior art materials would have a melting point greater than the 1000 °C lower limit recited in claim 1. As to the very large resistivity range of 24 orders of magnitude recited in claim 1, we agree with the Examiner that one of ordinary skill in the art would have expected the resistivity of the materials resulting from the proposed combination of Jiao or Dou with Kim to fall within the range recited in the claim because Jiao and Duo are directed to superconducting materials, and Kim provides reasoning to include magnetic ions and non- magnetic ions for the purpose of producing superconductors with enhanced magnetic field properties. Ans. 8-9. Thus, Appellant’s argument that Jiao and Dou fail disclose the recited resistivity is not persuasive. Accordingly, we affirm the Examiner’s rejections of claim 1 and dependent claims 2-9 and 11-19. Appeal 2021-001756 Application 15/570,553 7 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 5-9, 11-19 103 Jiao, Kim 1-3, 5-9, 11- 19 1-9, 11-19 103 Dou, Kim 1-9, 11-19 Overall Outcome 1-9, 11-19 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED