Ex Parte Dai et al

Board of Patent Appeals and Interferences

Jan 30, 2012

11588873 (B.P.A.I. Jan. 30, 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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/588,873 10/26/2006 Hongjie Dai STFD.237PA 1532
40581 7590 01/30/2012
CRAWFORD MAUNU PLLC
1150 NORTHLAND DRIVE, SUITE 100
ST. PAUL, MN 55120
EXAMINER
MCCRACKEN, DANIEL
ART UNIT PAPER NUMBER
1736
MAIL DATE DELIVERY MODE
01/30/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HONGJIE DAI, DAVID MANN and
GUANGYU ZHANG
____________

Appeal 2011-000838
Application 11/588,873
Technology Center 1700
____________

Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1 -
3, 5-7, 9-12, 14, 18, 19, 21, 24-26, 29, 37, 38, 40, 41, 54-58, 67, 71-73, 75-76, 123
and 124.1 We have jurisdiction under 35 U.S.C. § 6.
Appellants’ claimed invention relates to a method for the preparation of
single-walled carbon nanotubes (SWNT). App. Br. 3. Claim 1is illustrative:

1. A method for the preparation of single-walled carbon
nanotubes, comprising:

a) providing a gas stream comprising one or more carbon
sources, wherein the gas stream is enriched in one or more oxygen
sources; and

b) using the oxygen to mitigate the formation of hydrogen
radicals, depositing carbon from the one or more carbon sources on a
substrate under growth conditions by plasma enhanced chemical
vapor deposition to grow single-walled carbon nanotubes.
The Examiner relied on the following references in rejecting the
appealed subject matter:
Mildred S. Dresselhaus et al., Carbon Nanotubes Synthesis, Structure,
Properties, and Applications, 80 TOPICS IN APPLIED PHYSICS 1-9, 12-19
(2001).
Jing Kong et al., Chemical Vapor Deposition of Methane for Single-Walled
Carbon Nanotubes, 292 CHEMICAL PHYSICS LETTERS 567 (1998).

1 We note that the Examiner withdrew the rejections of claims 77, 78, 83-85 and
113-115. Ans. 3-5. Accordingly, this decision only reflects our review of the
appealed rejections for the remaining pending claims.
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Ho Lee et al., Hydrogen Plasma Treatment on Catalytic Layer and Effect of
Oxygen Additions on Plasma Enhanced Chemical Vapor Deposition of
Carbon Nanotube, 330 J. ALLOYS & COMPOUNDS 569 (2002).
Yo-Sep Min et al., Low-Temperature Growth of Single-Walled Carbon
Nanotubes by Water Plasma Chemical Vapor Deposition, 127 J. AM.
CHEMICAL SOC’Y 12498 (2005).
Appellants request review of the following rejections (App. Br. 4-5) from
the Examiner’s final office action that have not been withdrawn (Ans. 3-5):
1. Claims 1, 3, 5-7, 9-10, 11-12, 14, 18-19, 21, 24-26, 37-38, 40-41, 54-58, 67,
71-73, 75-76, and 123 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee and Kong..
2. Claims 2 and 124 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee, Kong and Dresselhaus.
3. Claim 29 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lee, Kong and Min.

OPINION
Prior Art Rejections
The dispositive issue for all the rejections on appeal is: Did the Examiner err
in determining that the combination of Lee and Kong would have led one skilled in
the art to a method of making single-wall nanotubes by using oxygen to prevent
the formation hydrogen radicals to promote the growth of single-wall nanotubes as
required by the subject matter of independent claim 1? 2
We answer this question in the negative and AFFIRM.

2 Appellants have only argued claim 1 in this rejection. Appellants did not argue
independent claim 67 and most of the dependent claims separately in the Brief.
Accordingly, these claims stand or fall together with claim 1. Claims separately
argued will be addressed separately.
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The Examiner found that Lee teaches a process of making carbon nanotubes
using plasma enhanced chemical vapor deposition with a gas stream of molecular
oxygen and carbon sources to promote the growth of carbon nanotubes. Ans. 6,
11. The Examiner also found that Lee teaches multiwall nanotubes versus single-
walled nanotubes. Id. at 7. The Examiner concluded that the presence of oxygen
in Lee’s process would inherently prevent the formation of hydrogen radicals in
making the nanotubes. Id. at 6, 13. The Examiner also found that Lee is directed
to the preparation of multi-wall nanotubes. However, the Examiner additionally
found that Kong teaches a process for the preparation of single-wall carbon
nanotubes (SWNT) by chemical vapor deposition. Id. at 7. The Examiner further
found that Kong recognizes that growth of SWNT is a matter of catalyst/support
and feedstock selection. Id. The Examiner concluded that one skilled in the art
would have been motivated to modify the process of Lee to employ a catalyst as
taught by Kong to synthesize high-quality SWNT materials at a very large scale.
Id.
In addressing claims 2 and 124, the Examiner relied on Dresselhaus to meet
the limitation that the SWNT have sp2 growth structures. Id. at 8. The Examiner
additionally found that Dresselhaus teaches the sp2 structures are present in the
planar structure characteristic of all SWNT. Id.
In addressing claim 29, the Examiner relied on Min to meet the limitation of
providing water vapor as part of the gas stream. Id. at 9. The Examiner further
found that Min teaches the addition of water vapor as beneficial to nanotube purity.
Id.
Appellants argued that the Examiner failed to establish correspondence to
limitations directed to forming single-walled carbon nanotubes using an enriched
oxygen source, which are relevant to scavenging hydrogen radicals and further
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promoting the growth of sp2 structures. App. Br. 12. Appellants further argued
that the Examiner failed to adequately establish the inherency allegation that the
mere presence of oxygen in Lee’s process may result in the prevention of hydrogen
radicals because Lee uses oxygen in hydrogen-rich growth conditions that actually
increase radicals while Appellants disclose the high concentration of H species do
not favor the formation of SWNTs. Id. at 12, 14. Appellants additionally argued
that Lee appears to include oxygen together with what appears to be “the presence
of other gasses” and the Examiner failed to establish that this combination of
gasses would necessarily mitigate hydrogen radical formation as claimed. Id. at
12.
We find no error in the Examiner’s reasoning that the combination of Lee
and Kong would have led one skilled in the art to a method of making single-wall
nanotubes by using oxygen to prevent the formation hydrogen radicals to promote
the growth of single-wall nanotubes as required by the subject matter of
independent claim 1. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405
(2007); In re Siebentritt, 372 F.2d 566, 567-68 (CCPA 1967) (express suggestion
to interchange methods which achieve the same or similar results is not necessary
to establish obviousness); see also In re Kahn, 441 F.3d 977, 985-88 (Fed. Cir.
2006); In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For obviousness
under § 103, all that is required is a reasonable expectation of success.” (citations
omitted)); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“ [T]he test [for
obviousness] is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”); In re Sovish, 769 F.2d 738, 743
(Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in the art); In
re Bozek, 416 F.2d 1385, 1390 (CCPA 1969) (“Having established that this
knowledge was in the art, the examiner could then properly rely, as put forth by the
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solicitor, on a conclusion of obviousness ‘from common knowledge and common
sense of the person of ordinary skill in the art without any specific hint or
suggestion in a particular reference.’”).
We agree with the Examiner that Lee’s process of making nanotubes using
oxygen with carbon sources would necessarily prevent the formation hydrogen
radicals to promote the growth of the nanotubes. Ans. 13. In this instance, we find
that the Examiner has made a prima facie case of obviousness by providing a
sound basis for determining that the presence of oxygen in Lee’s process prevents
the formation hydrogen radicals to promote the growth of the nanotubes as
described by the subject matter of claim 1. In doing so, the Examiner has properly
shifted the burden to Appellants to rebut the Examiner’s position that the
combination of Lee and Kong leads one skilled in the art to the claimed invention.
As noted by the Examiner, Appellants determined the presence or absence of
H radicals by measuring the presence of OH species as evidence of the reaction of
oxygen with H species. Spec. 21: 5-8; Ans. 12. As also noted by the Examiner,
Lee measures the presence of OH species as a function of oxygen amount. Lee,
Figure 4(b), 571; Ans. 12. Therefore, we agree with the Examiner’s reasoning
that, like Appellants, Lee’s measurement of the presence of OH species is also
evidence of the reaction of oxygen with hydrogen species. Ans. 12. Appellants
have not directed us to evidence or substantive explanation as to why the amount
of oxygen in Lee’s process is not suitable to prevent the formation of H radicals.
Absence such evidence or explanation, one skilled in the art would conclude that
the oxygen in Lee’s process prevents the formation of H radicals.
We are also unpersuaded by Appellants’ argument that Lee operates in
hydrogen-rich growth conditions that actually increase radicals while Appellants
disclose the high concentration of H species does not favor the formation of
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SWNTs (App. Br. 14). The Examiner correctly noted that claim 1 contains no
limitations as to the hydrogen conditions under which Appellants allegedly
operate. Ans. 15. Moreover, as noted above, Lee’s OH presence measurement is
consistent with Appellants’ OH presence measurement to establish the reaction of
oxygen with H species.
Appellants’ argument concerning the presence of other gasses is also
unpersuasive because, as correctly noted by the Examiner, claim 1 is written in
open language and, thus, would not exclude other components. Id. Moreover,
Appellants have not identified these gasses nor adequately explained how such
gasses would interfere with the formation of SWNTs.
We also agree with the Examiner (Ans. 18-19) that Appellants’ arguments
do not consider the prior art as a whole. See In re Keller, 642 F.2d at 425 (the test
for obviousness is what the combined teachings of the references would have
suggested to one of ordinary skill in the art). The Examiner noted, and we agree,
that Kong provides the guidance to one skilled in the art on how to promote the
growth of SWNTs. Ans. 7. The Examiner clearly states that the claimed invention
would have been obvious to one skilled in the art in light of the combination of Lee
and Kong. Id. Appellants’ arguments improperly focus on the teachings of Lee
instead of addressing the Examiner’s stated case for obviousness (see generally
App. Br.). “[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of references.” In
re Keller, 642 F.2d at 426.
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Accordingly, we sustain the Examiner’s rejection of claims 1, 3, 5-7, 9, 10,
11, 12, 14, 18, 19, 21, 24-26, 37, 38, 40, 41, 54-58, 67, 71-73, 75-76, and 123
under 35 U.S.C. § 103(a) as unpatentable over Lee and Kong.
With respect to the Examiner’s rejection of claims 2 and 124 under
35 U.S.C. § 103(a) as being unpatentable over Lee, Kong and Dresselhaus and of
claim 29 under 35 U.S.C. § 103(a) as being unpatentable over Lee, Kong and Min,
we note that Appellants rely primarily on the arguments addressed above in
refuting these rejections. App. Br. 16-17. Accordingly, we sustain these rejections
for the reasons given above.
With respect to claim 29, we note that Appellants argued that the Examiner
failed to explain how the teachings of Min would be combined with the teachings
of Lee and Kong because Min does not teach providing water vapor in a carrier
gas. Id. at 17. We are unpersuaded by this argument and agree with the
Examiner’s reasoning that the water vapor of Min would serve as a source of
oxygen. Ans. 21. Appellants’ argument again fails to consider the prior art as a
whole. Moreover, Appellants have provided no explanation why the water vapor
of Min could not be used as a source of oxygen in the process resulting from the
combination of Lee and Kong.
For the forgoing reasons and those expressed by the Examiner we affirm the
appealed rejections.
ORDER
The rejection of claims 1, 3, 5-7, 9, 10, 11, 12, 14, 18, 19, 21, 24-26, 37, 38,
40, 41, 54-58, 67, 71-73, 75-76, and 123 under 35 U.S.C. § 103(a) as unpatentable
over Lee and Kong is affirmed.
The rejection of claims 2 and 124 under 35 U.S.C. § 103(a) as unpatentable
over Lee, Kong and Dresselhaus is affirmed.
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The rejection of claim 29 under 35 U.S.C. § 103(a) as unpatentable over
Lee, Kong and Min 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.

AFFIRMED

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