Ex Parte McElrath et al

Board of Patent Appeals and Interferences

Feb 26, 2009

10719693 (B.P.A.I. Feb. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENNETH O. MCELRATH, YUEMIE YANG and
KENNETH A. SMITH
____________

Appeal 2008-5919
Application 10/719,693
Technology Center 2800
____________

Decided:1 February 27, 2009
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Before BRADLEY R. GARRIS, TERRY J. OWENS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-5919
Application 10/719,693

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-10, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim an electron emitter comprising a carbon
nanotube particulate. Claim 1 is illustrative:
1. An electron emitter comprising a carbon nanotube particulate on a
surface wherein the carbon nanotube particulate comprises entangled small-
diameter carbon nanotubes arranged in a three-dimensional network wherein
the small-diameter nanotubes have an outer diameter in a range of about
0.5 nm and about 3 nm, wherein the carbon nanotube particulate has a cross-
sectional dimension in a range of about 0.1 micron and about 100 microns.

The References
Jin 6,250,984 B1 Jun. 26, 2001
Smalley 2002/0085968 A1 Jul. 4, 2002
The Rejection
Claims 1-10 stand rejected under 35 U.S.C. § 103 over Smalley in view of
Jin.
OPINION
We affirm the Examiner’s rejection.
The Appellants argue the claims as a group (Br. 3-6). We therefore
limit our discussion to one claim in that group, i.e., claim 1, which is the sole
independent claim. Dependent claims 2-10 stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(vii) (2007).

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Application 10/719,693

Issue
Have the Appellants shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, an electron emitter comprising a
carbon nanotube particulate that is on a surface, comprises nanotubes that
are arranged in a three-dimensional network and have an outer diameter of
about 0.5 nm to about 3 nm, and has a cross-sectional dimension of about
0.1 micron to about 100 microns?
Findings of Fact
Smalley discloses single-wall carbon nanotube ropes wherein the
nanotubes have a diameter of 13.8 Å (1.38 nm) and a length of 0.1 up to 10,
100 or 1,000 microns, and the ropes comprise about 5 to 5,000 nanotubes
(¶ 0088). The ropes may be collected as a tangled collection stuck together
in a 10 mm2 to 1,000 mm2 or greater felt (¶ 0089).
Jin teaches: 1) “Carbon nanotubes feature a high aspect ratio (>1,000)
and a small tip radii of curvature (~5-50 nm). These geometric
characteristics, coupled with the high mechanical strength and chemical
stability of the tubules, make carbon nanotubes attractive as electron field
emitters” (col. 2, ll. 47-51), and 2) “Electron field emission is enhanced
when the geometrical feature of the emitter is made small, due to the
concentration of electrical field near sharp tips. Carbon nanotubes’ small
diameter, e.g., as small as 1.3 nm, provides an effective field concentrating
feature” (col. 4, ll. 46-50).
Analysis
The Appellants argue that “[m]ats and felts are two out of many
different nanotube structures disclosed by Smalley, and there is no
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Appeal 2008-5919
Application 10/719,693

suggestion that these structures should or could be used as electron emitters”
(Br. 5).
Because Smalley’s carbon nanotube ropes are the same or essentially
the same as the Appellants’ carbon nanotube particulate in the form of ropes
(claim 4), it appears that Smalley’s carbon nanotube ropes have the same
properties as the Appellants’ nanotube ropes including the ability to function
as an electron emitter. As stated in In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990), “when the PTO shows sound basis for believing that the products
of the applicant and the prior art are the same, the applicant has the burden
of showing that they are not.” Moreover, Jin’s disclosure that carbon
nanotubes are attractive as electron field emitters (col. 2, ll. 47-51; col. 4,
ll. 46-50) indicates that the carbon nanotube ropes in Smalley’s felt are
capable of functioning as electron emitters.
The Appellants argue (Br. 5):

Furthermore, the dimensions that the Examiner references in
paragraph 88 of Smalley relate to ropes of nanotubes, as opposed to
the felt in paragraph 89 which comprises a collection of multiple
ropes stuck together in a mat. (See Smalley at paragraph 89, lines 1-
4). Therefore, even if one could consider the felt of Smalley to be
relevant to electron emitters, which Smalley plainly does not suggest,
the dimensional range recited in claim 1 for the nanotube particulate
would still not be satisfied by the felt of Smalley.

Smalley’s carbon nanotube rope diameter of 13.8 Å (1.38 nm)
(¶ 0088) falls within the range of about 0.5 nm to about 3 nm required by the
Appellants’ claim 1. The Examiner finds that Smalley’s carbon nanotube
rope lengths of 0.1, 10 and 100 microns (¶ 0088), which fall within the
cross-sectional dimension range of about 0.1 micron to about 100 microns
recited in the Appellants’ claim 1, are a cross-sectional dimension (Ans. 3-
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Application 10/719,693

4), and the Appellants do not dispute that finding. Since the Examiner’s
finding is reasonable and the Appellants have not challenged it, we accept it
as fact. See In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964).
Moreover, when Smalley’s carbon nanotube rope includes a number of
carbon nanotubes near the low end of Smalley’s range of about 5 to 5,000
carbon nanotubes (¶ 0088), the rope’s width dimension can be within the
0.1 micron to about 100 micron range required by the Appellants’ claim 1.
As for the claim 1 requirement that the carbon nanotube particulate is on a
surface, each carbon nanotube rope in Smalley’s felt (¶ 0089) is on a surface
comprising the other carbon nanotube ropes in the felt with which that
carbon nanotube rope is tangled.
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, an electron emitter comprising a
carbon nanotube particulate that is on a surface, comprises nanotubes that
are arranged in a three-dimensional network and have an outer diameter of
about 0.5 nm to about 3 nm, and has a cross-sectional dimension of about
0.1 micron to about 100 microns.
DECISION/ORDER
The rejection of claims 1-10 under 35 U.S.C. § 103 over Smalley in
view of Jin is affirmed.
It is ordered that the Examiner’s decision is affirmed.

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Appeal 2008-5919
Application 10/719,693

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

tc

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