11158047 (B.P.A.I. Apr. 23, 2010)

Ex Parte Han et al

Board of Patent Appeals and InterferencesApr 23, 2010

11158047 (B.P.A.I. Apr. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte IN-TAEK HAN and HA-JIN KIM ________________ Appeal 2009-009762 Application 11/158,047 Technology Center 1700 ________________ Decided: April 23, 2010 ________________ Before BRADLEY R. GARRIS, CHUNG K. PAK, and TERRY J. OWENS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-20, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2009-009762 Application 11/158,047 2 The Invention The Appellants claim methods for making catalyst particles for carbon nanotube manufacture and for making the catalyst particles and using them to make carbon nanotubes. Claim 1 is illustrative: 1. A method of preparing catalyst particles for carbon nanotube manufacture, the method comprising: applying a catalytic metal precursor solution to a substrate, the catalytic metal precursor solution comprising a catalytic metal precursor and a solvent; freeze-drying the catalytic metal precursor solution applied to the substrate; and reducing the freeze-dried catalytic metal precursor to catalytic metal. The References Tsuboi 6,346,023 B1 Feb. 12, 2002 Liu 2003/0012722 A1 Jan. 16, 2003 Yoichi Murakami et al., “Direct synthesis of high-quality single-walled carbon nanotubes on silicon and quartz substrates”, 377 Chemical Physics Letters 49-54 (2003) (hereafter Murakami). The Rejections The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1- 5, 8-13 and 15-20 over Murakami in view of Liu, and claims 6, 7 and 14 over Murakami in view of Liu and Tsuboi. OPINION We reverse the rejections. Appeal 2009-009762 Application 11/158,047 3 Issue Have the Appellants indicated reversible error in the Examiner’s determination that the applied prior art would have rendered prima facie obvious, to one of ordinary skill in the art, applying to a substrate and freeze drying a catalytic metal precursor and a solvent? Findings of Fact Murakami discloses a method for making single walled carbon nanotubes comprising submerging an n-type Si wafer or fused quartz into a solution of molybdenum acetate and cobalt acetate in ethanol for 10 minutes (p. 50, right col., second paragraph). “This piece was then drawn up from the solution at a constant speed of 4 cm/min. The surface of the substrate was rapidly dried at several millimeters above the liquid contact level as soon as it was removed from the solution.” See id. Liu discloses a method for making single walled carbon nanotubes using a metal catalyst on an aerogel support (¶ 0002).1 The catalyst/support is “made by solvent-gel synthesis with subsequent removal of the liquid solvent by drying selected from the group consisting of supercritical drying, freeze drying and combinations thereof, with supercritical drying being preferred” (¶ 0015). The disclosed freeze drying “took a few days to dry the sample totally” (¶ 0054).2 1 Liu states that an aerogel is “a gel with air as dispersing agent prepared by drying” (¶ 0027). 2 The Examiner does not rely upon Tsuboi for any disclosure that remedies the deficiency in Murakami and Liu as to the above-stated issue (Ans. 9). Hence, we do not further address Tsuboi. Appeal 2009-009762 Application 11/158,047 4 Analysis The Examiner has the initial burden of establishing a prima facie case of obviousness. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984); In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976). The Appellants argue that in view of Murakami’s teaching that the drying is rapid and takes place as soon as the substrate is removed from the solution, one of ordinary skill in the art would not have used in Murakami’s method Liu’s freeze drying which takes a long time (Br. 12). The Examiner argues: “Murakami does not define ‘rapid’ in a specific time frame. Therefore, it is the examiner’s position that ‘rapidly dried’ could be interpreted as drying in several seconds, several hours, or more” (Ans. 10). Thus, the Examiner argues, Liu’s freeze drying is rapid drying (Ans. 11). Murakami’s substrate is drawn up from the solution at a constant speed of 4 cm/min, which is 40 mm/60 sec or 1.5 sec/mm (p. 50, right col., second paragraph). Thus, Murakami’s disclosure that “[t]he surface of the substrate was rapidly dried at several millimeters above the liquid contact level as soon as it was removed from the solution”, see id., indicates that the substrate was dried in about 3 mm x 1.5 sec/mm, or about 5 seconds. Hence, the Examiner’s interpretation of Murakami’s term “rapidly dried” as including drying in several hours or more is not a reasonable interpretation of that term.3 3 Likewise, the Examiner’s unsupported argument that “it was known in the art at the time of the invention to remove solvent from a substrate within 1 hour of freeze drying (e.g. ‘rapid drying’)” (Ans. 11) is not well taken. Appeal 2009-009762 Application 11/158,047 5 Thus, the Examiner has not established that it would have been prima facie obvious to one of ordinary skill in the art to dry Murakami’s substrate by freeze drying. Conclusion of Law The Appellants have indicated reversible error in the Examiner’s determination that the applied prior art would have rendered prima facie obvious, to one of ordinary skill in the art, applying to a substrate and freeze drying a catalytic metal precursor and a solvent. DECISION/ORDER The rejections under 35 U.S.C. § 103 of claims 1-5, 8-13 and 15-20 over Murakami in view of Liu, and claims 6, 7 and 14 over Murakami in view of Liu and Tsuboi are reversed. It is ordered that the Examiner’s decision is reversed. REVERSED kmm ROBERT E. BUSHNELL & LAW FIRM 2029 K STREET NW SUITE 600 WASHINGTON, DC 20006-1004