Robert W. Cumberland

Patent Trials and Appeals Board

Sep 20, 2019

14198801 - (D) (P.T.A.B. Sep. 20, 2019)

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.
14/198,801 03/06/2014 Robert W. Cumberland 09-0269-US-
DIV(24691-718)
9242
60476 7590 09/20/2019
PATENT DOCKET DEPARTMENT
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
MILLER, DANIEL H
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
09/20/2019 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):
USpatents@armstrongteasdale.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT W. CUMBERLAND
__________

Appeal 2019-000309
Application 14/198,801
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134 the final rejections of
claims 16–21, 23–30, and 32. Claims 1–15, 22, and 31 have been canceled.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We REVERSE.
The invention is directed to an array of substantially aligned boron
nitride nano-elements and a microelectronic device which includes such an
array (claims 16 and 23; Spec. ¶¶ 6, 7).

1 According to the Appeal Brief, the real party in interest is listed as “The
Boeing Company” (App. Br. 1).
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Claims 16 and 23 are illustrative:
16. An array of substantially aligned boron nitride nano-
elements, the array comprising:
a plurality of substantially aligned carbon nano-elements;
and
a plurality of boron nitride nano-elements formed on, and
extending from, ends of said plurality of substantially aligned
carbon nano-elements, the boron nitride formed from a source
of boron atoms and a source of nitrogen atoms, wherein the
source of boron atoms comprises a boron containing compound
selected from a group consisting of BH3, B2H4, and B2H6.
23. An electronic device comprising:
at least one of a heat-generating component and a heat
sink; and
an array of substantially aligned boron nitride nano-
elements deposited on a surface of the at least one of a heat-
generating component and a heat sink, the array comprising:
a plurality of substantially aligned carbon nano-elements;
and
a plurality of boron nitride nano-elements formed on, and
extending from, ends of said plurality of substantially aligned
carbon nano-elements, the boron nitride formed from a source
of boron atoms and a source of nitrogen atoms, wherein the
source of boron atoms comprises a boron containing compound
selected from a group consisting of BH3, B2H4, and B2H6.
Appellant appeals the following rejections:
1. Claims 16–21, 23, 26–30, and 32 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Arik et al. (US 2005/0006754 A1,
published Jan. 13, 2005, “Arik”) in view of Bando et al. (JP 2004-
190183, published July 8, 2004, and relying on a machine translation,
“Bando”), and Unger et al. (US 2005/0040847 A1, published Feb. 24,
2005, “Unger”).
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2. Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Arik in view of Bando, Unger, and Gross et al.
(US 2010/0190023 A1, published July 29, 2010, “Gross”).
3. Claims 19, 20, 28, and 29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Arik in view of Bando, Unger, and Leu et al.
(US 2005/0092464 A1, published May 5, 2005, “Leu”).
Appellant’s arguments focus only on the subject matter of claims 16 and
23 (App. Br. 2–3, 8–10). Accordingly, any claim not argued separately will
stand or fall with our analysis of claims 16 and 23 under rejection (1).
FINDINGS OF FACT & ANALYSIS
REJECTION (1)
The Examiner rejects claims 16 and 23 over the combined teachings
of Arik in view of Bando and Unger (Final Act. 2–5).
The Examiner finds Arik teaches that boron nitride nano-elements,
which possess both high thermal and low electrical conductivity, are
beneficial for connecting a heat source to a heat sink in an electrical device
(id. at 2). The Examiner finds that Bando teaches a method of coating
boron-nitride onto an array of carbon nanotubes (id. at 3). The Examiner
concludes that it would have been obvious at the time of the invention to
apply Bando’s use of boron and nitrogen gases to form Arik’s boron-nitride
nanotubes (id.).
Appellant does not contest the combination of Arik and Bando (App.
Br. 3–5). The Examiner finds that Arik and Bando fail to teach that boron
nitride nano-elements are formed on, and extend from, the ends of carbon
nano-elements (Final Act. 5).
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The Examiner, however, finds that Unger teaches forming an
electrical device by providing a plurality of first nano-elements; then
providing growth catalysts thereon; and thereafter, growing a plurality of
second nano-elements from the end of the first nano-elements (id.). The
Examiner concludes that it would have been obvious to use Unger’s method
to form the second nano-elements from boron nitride, starting from the first
carbon nano-elements’ ends, in order to provide useful connective nano-
structures in electrical and/or thermal control devices, as taught by Arik in
view of Bando (id.). The Examiner determines that such a modification
would have been obvious because Arik teaches that boron nitride nanotubes
are desirable for connecting electrical elements that are thermally conductive
and electrically insulating (id.).
Appellant argues that although Unger teaches forming nano-elements
from pre-existing nano-elements, Unger fails to teach “forming the second
nano[-]element[s] from a different material than the first nano[-]element[s]”
(App. Br. 5).
We are not persuaded by this argument because Unger teaches or
suggests that the second nano-elements may be formed from a different
material than the first nano-element (see Unger ¶ 39 (disclosing that “[t]he
first and/or the at least one second nanoelement may include a nanotube . . .
[t]he nanotube may, for example, be a carbon nanotube, a carbon-boron
nanotube, a carbon-nitrogen nanotube, a tungsten sulphide nanotube or a
chalcogenide nanotube”) (emphasis added)).
Appellant argues, inter alia, that Arik’s electrical device is intended to
provide electrically insulative regions of high thermal conductivity (App. Br.
6 (citing Arik ¶ 42)). Appellant contrasts this purpose of Arik’s device with
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Unger’s intended purpose, namely to increase an array’s electrical
conductivity using branched carbon nanotubes (App. Br. 6 (citing Unger
¶¶ 3–5)). Appellant argues that the Examiner applies Arik to provide
motivation for one of ordinary skill in the art to modify Unger’s nanotube
arrangement, which possesses increased electrical conductivity, instead to
have electrically insulating properties (App. Br. 8). Appellant thus argues
that the Examiner’s proposed modification would render the resulting array
unsuitable for the intended purpose of both Arik’s and Unger’s arrays (id. at
5–6).
In response, the Examiner asserts that “there is no evidence” that the
resulting array would be unsuitable for its intended purpose (Ans. 10). The
Examiner contends that Arik “is clearly still able to provide thermal
connection using the nanotube growth process of” Unger, which “provid[es]
two nano-elements” (id.).
The preponderance of the evidence favors Appellant’s argument of
non-obviousness. The Examiner has not adequately responded to
Appellant’s proffered evidence, which shows that Unger’s purpose is to
increase an array’s electrical conductivity (Unger ¶¶ 3–5), whereas Arik’s
purpose is to provide electrically insulative regions (Arik ¶ 42). Unger
teaches that the second nano-elements branch from a single first nano-
element, thereby conferring the array’s increased electrical conductivity (id.
¶¶ 5, 42, 43, 63; Fig. 2C).2 On the other hand, Arik explicitly teaches that
boron nitride nanotubes possess “low electrical conductivity” (Arik ¶ 42). In

2 We note that Unger does not disclose boron nitride as a suitable material
for the branched portion of the second nano-elements (Unger ¶ 39; claim
39).
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other words, combining Unger’s teaching to form branched second nano-
elements having carbon nanotubes with good electrical conductivity at the
end of Arik’s boron nitride nanotubes having low electrical conductivity
would have rendered Arik’s device unsuitable for its intended purpose (i.e.,
good thermal conductivity, but low electrical conductivity). In re Gordon,
733 F.2d 900, 902 (Fed. Cir. 1984).
We, therefore, are persuaded by Appellant that one of ordinary skill in
the art would not have found it obvious to combine Unger’s second nano-
element from boron nitride into Arik’s modified electrical device.
On this record, we reverse the Examiner’s § 103(a) rejection (1)
above.
REJECTIONS (2) and (3)
On this record, we reverse the Examiner’s § 103(a) rejections (2) and
(3).
DECISION
The Examiner’s decision is reversed.
ORDER
REVERSED