Ex Parte Karna et al

Patent Trial and Appeal Board

Apr 12, 2017

11790052 (P.T.A.B. Apr. 12, 2017)

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.
11/790,052 04/23/2007 Shashi P. Karna ARL 06-55 7464
21364 7590 04/12/2017
U S ARMY RESEARCH LABORATORY
ATTN: RDRL-LOC-I
2800 POWDER MILL RD
ADELPHI, MD 20783-1138
EXAMINER
NADAV, ORI
ART UNIT PAPER NUMBER
2811
MAIL DATE DELIVERY MODE
04/12/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte SHASHI P. KARNA and GOVIND MALLICK
Appeal 2016-003026
Application 11/790,0521
Technology Center 2800
Before KAREN M. HASTINGS, BRIAN D. RANGE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—6, 14, 16, 18, and 20. We have jurisdiction.
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to the Appellants, the real party in interest is the United States
of America as represented by the Secretary of the Army. Appeal Br. 2.
Appeal 2016-003026
Application 11/790,052
STATEMENT OF THE CASE2
Appellants describe the invention as relating to field effect transistor
arrays utilizing single wall carbon nano-tubes as the channel for the field
effect transistors. Spec. 13. Claims 1 and 20, reproduced below with
emphasis added to certain key recitations, are illustrative of the claimed
subject matter:
1. A field effect transistor comprising a substrate,
a semiconducting channel for transistor action
comprising substantially only a plurality of semiconducting
carbon nano-tubes disposed on a surface of said substrate
wherein said plurality of carbon nano-tubes are disposed in
random directions parallel to said surface of said substrate,
and
a plurality of electrodes disposed over said plurality of
semiconducting carbon nanotubes such that said electrodes are
spaced apart from each other.
20. A metal-oxide semiconductor field effect transistor
comprising:
a substrate,
an electrical insulating layer disposed on said substrate,
a semiconducting channel for transistor action comprising
substantially only a plurality of
semiconducting single wall carbon nano-tubes disposed in
random horizontal directions on a said electrical insulating layer,
2 In this decision, we refer to the Final Office Action mailed April 29, 2015
(“Final Act.”), the Appeal Brief filed September 14, 2015 (“Appeal Br.”),
the Examiner’s Answer mailed December 1, 2015 (“Ans.”), and the Reply
Brief filed January 27, 2016 (“Reply Br.”).
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Application 11/790,052
a plurality of electrodes disposed over said plurality of
semiconducting single wall carbon nano-tubes such that said
electrodes are spaced apart from each other,
wherein said plurality of single wall carbon nano-tubes
randomly disposed on the surface of said substrate contain a density
of from 3 to 6 bundles of disentangled, nearly-defect-free single-
walled carbon nano-tubes per 100 pm2.
Appeal Br. 25, 29 (Claims App’x).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Liebau et al.
(hereinafter “Liebau”)
Choi et al.
(hereinafter “Choi”)
Zhang et al.
(hereinafter “Zhang”)
Zhou et al.
(hereinafter “Zhou”)
US 2003/0228467 Al
US 6,930,343 B2
US 6,972,467 B2
US 7,014,743 B2
Dec. 11,2003
Aug. 16, 2005
Dec. 6, 2005
Mar. 21,2006
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1—6, 14, 16, and 18 under 35 U.S.C. § 112 as
failing to comply with the written description requirement. Ans. 2.
Rejection 2. Claims 1—6, 14, 16, 18, and 20 under 35 U.S.C. § 103 as
unpatentable over Liebau in view of Zhang, Zhou, or Choi. Id. at 3.
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Application 11/790,052
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identity the alleged error in the examiner’s rejections”)).
Rejection 1. The Examiner rejects claims 1—6, 14, 16, and 18 under
35 U.S.C. § 112 as failing to comply with the written description
requirement. Ans. 2. In particular, the Examiner maintains that there is no
support in the Specification for the recitation “said plurality of carbon nano­
tubes are disposed in random directions parallel to said surface of said
substrate” as recited in claim 1. Id. The Examiner finds that the
Specification does not state that the nano-tubes are parallel to the substrate.
Id. at 6. The Examiner also finds that the random nature of the nanotubes
means that some tubes are on top of each other and are, therefore, not
located in the same plane. Id. at 7, 12.
Appellants explain that the Specification states: “During the carbon
nano-tube formation, the carbon nano-tubes 20 grow in random directions
on the wafer/substrate 14.” Appeal Br. 5 (quoting Spec. 1 5) (underlining
and italics original to Appeal Brief; bolding added). Appellants also state
that Figure 2 demonstrates the carbon nanotubes generally lying on the plane
of the substrate. The preponderance of the evidence best supports
Appellants’ position.
As a threshold matter, we agree with Appellants that, in the context of
claim 1 and the Specification, “parallel” does not require absolute
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parallelism. Appeal Br. 8—9. Rather, while physical placement of elongated
objects may always be less than exact, but the objects may nonetheless be
considered parallel. Reply Br. 6—7 (explaining that railroad tracks are
“parallel” even if the distance between them may vary slightly). Here,
“parallel” in the context of claim 1 merely means that the carbon nanotubes
are disposed in a horizontal direction on the electrical insulating layer. Both
the text cited by Appellants and Figure 2 provide written description support
for the “parallel” recitation as construed in this manner. We, therefore, do
not sustain the Examiner’s rejection based on written description.
Rejection 2, Claim 1. The Examiner rejects claims 1—6, 14, 16, 18,
and 20 as obvious over Liebau in view of Zhang, Zhou, or Choi. Ans. 3.
After considering the evidence presented in this Appeal and each of
Appellants’ contentions, we are not persuaded that Appellants identify
reversible error. Thus, we affirm this rejection for the reasons expressed in
the Final Office Action and the Answer. We add the following primarily for
emphasis.
The Examiner finds that Liebau teaches in Figure 2 and related text a
field effect transistor comprising most recitations of claim 1. Ans. 3
(providing citations to Liebau). The Examiner finds that Liebau does not
explicitly state using the device for transistor action and does not teach using
only a plurality of semiconducting carbon nano-tubes. Id. The Examiner
finds, however, that Zhang, Zhou, and Choi each teach using only a plurality
of semiconducting single wall carbon nano-tubes on a surface of said
substrate. Id. The Examiner concludes:
It would have been obvious to a person of ordinary skill in the
art at the time the invention was made to use only a plurality of
semiconducting single wall carbon nanotubes on a surface of
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said substrate in prior art's device in order to use the device in
an application which requires specific characteristics, such as
controlling the flow of electrons by the gate voltage, which is
obtained only by having a plurality of semiconducting single
wall carbon nano-tubes.
Id. at 4. A preponderance of the evidence supports the Examiner’s findings
and conclusion.
Appellants first argue that the Examiner picks a random orientation
embodiment of Liebau without explanation and argue that Liebau teaches
nanotubes “substantially parallel to one another” in a preferred embodiment.
Appeal Br. 11 (quoting Liebau 126) (emphasis removed); see also Reply
Br. 9. The Examiner properly considered the random orientation
embodiment, however. See In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)
(“all disclosures of the prior art, including unpreferred embodiments, must
be considered”). As further elaborated upon below, choosing that
embodiment did not piece together select teachings. Rather, the Examiner
focused on the embodiment illustrated by, for example, Figure 1 and the text
of Liebau paragraph 2. Liebau, Fig. 1; Ans. 14—15.
Appellants also argue that Zhang and Choi teach away from random
nanotube orientations by teaching parallel orientations and argue that Zhou
also does not teach the random arrangement. Appeal Br. 12—15; Reply
Br. 9—10. Appellants, however, do not cite to any evidence that criticizes,
discredits, or otherwise discourages the random orientation. Mere disclosure
of alternative embodiments, in this instance, does not persuasively establish
a teaching away that would negate obviousness. Cf. In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than
one alternative does not constitute a teaching away from any of these
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alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed in the ’198 application.”).
Moreover, even if Zhang, Choi, and Zhou do not teach the random
arrangement, this does not establish error because the Examiner relies on
Liebau for this teaching. “Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references.” In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
Appellants also argue that Fiebau does not teach a field effect
transistor (FET) and, therefore, none of the references teach a field effect
transistor with randomly arranged carbon nanotubes. Appeal Br. 15—16;
Reply Br. 10—12. The Appellants, however, do not persuasively dispute the
Examiner’s finding that Fiebau teaches that it was already well known in the
art to use semiconducting carbon nanotubes as semiconductors in nano­
circuitry. Ans. 16—18. The evidence supports the Examiner’s position and
supports that even random distributions of bundles of nanotubes were used
for such purpose:
Since nanotubes, in particular carbon nanotubes, are suitable
for use as metallic conductors and as semiconductors, in the
context of nanocircuitry it is desirable for nanotubes of this
type to be applied in targeted structured form to planar
substrates. The use of nanotubes, such as in particular carbon
nanotubes, as components, e.g. in electric circuits, requires
them to make contact with metallic conductors. Nanotubes of
this type are usually available as dispersions or as powders.
When dispersions of this type are applied to planar surfaces,
however, random distributions of bundles of nanotubes and
of isolated nanotubes are usually obtained. Therefore,
nanotubes from dispersions are applied to surfaces which have
already been prestructured.
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Liebau 12 (emphases added). We find, as the Examiner found, that this
passage of Linder is best understood as referring to FET-based
semiconductor circuitry and referring to the use of carbon nanotubes as
providing a semiconducting channel for transistor action in the FET-based
circuitry. Ans. 17—18.
Appellants argue that rather than teaching a FET device, Liebau
teaches the use of carbon nanotubes as electric lines. Appeal Br. 15.
Appellants, however, focus solely on latter portions of Liebau rather than the
passage reproduced above. The preponderance of the evidence indicates that
Liebau teaches both functions of randomly oriented carbon nanotubes.
Appellants also argue that none of the reference teach “comprising . . .
only a plurality of semiconducting carbon nano-tubes” as recited in claim 1
because neither Zhang nor Choi teach removing metallic carbon nanotubes.
Appeal Br. 16—17; Reply Br. 12—13. The Examiner, however, cites passages
from Zhang and Choi that teach using only semiconducting single wall
carbon nano-tubes. Ans. 21—22. Choi, for example, teaches that nanotubes
may be metal nanotubes or semiconductor nanotubes and, shortly thereafter,
states “[a] memory device according to the present invention uses
semiconductor nanotubes.” Choi 3:42-44. Thus, a preponderance of the
evidence supports the Examiner’s position that Zhang and Choi teach this
recitation.
Appellants also argue that the Examiner’s rationale for combining the
cited references’ teachings “is quite suspect.” Appeal Br. 17. The Examiner
stated a technical rationale for combining the references, however, and
Appellants did not persuasively refute that rationale. As such, Appellants
have not identified harmful error in the rationale.
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Because Appellants’ arguments do not identify reversible error, we
sustain the Examiner’s rejection of claim 1.
Rejection 2, claim 20. Appellants argue that claim 20 recites “[a]
metal-oxide semiconductor field effect transistor” (i.e., a MOSFET) and that
the Examiner has not adequately explained how this recitation is taught by
the art. Appeal Br. 18; Reply Br. 14. The Examiner first states that this
recitation is not limiting because it appears in the preamble of the claim. We
disagree. The recitation limits the scope of claim 20 because it adds
structure rather than merely reciting the intended use of structure or merely
providing a descriptive name to the claim as a whole. Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (“If the claim
preamble, when read in the context of the entire claim, recites limitations of
the claim . . . then the claim preamble should be construed as if in the
balance of the claim”).
In the alternative, the Examiner finds that a MOSFET is not
fundamentally different from a FET and cites Choi as teaching conventional
MOSFETs. Ans. 25. Appellants, however, persuasively argue that not all
FETs are MOSFETs. Reply Br. 14. The Examiner also has not explained
why, in view of the cited references, a person of skill in the art would have
been inclined to apply the random nanotube orientations of Liebau to a
MOSFET. Rather, the citation to Choi refers to a then prior art device
(Reply Br. 14 n.7), and the Examiner has not explained that Choi encourages
the use of nanotubes (or randomly orientated nanotubes) for a MOSFET.
We, therefore, agree with Appellants that “it was in error for the Examiner to
rely solely [on the] teaching of a FET as supposedly rendering obvious a
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MOSFET” (Reply Br. 14), and, based on the present record, we do not
sustain the Examiner’s rejection of claim 20.
Rejection 2, claim 2. Claim 2 recites “[t]he transistor as defined in
claim 1 wherein said electrodes are linear, elongated and parallel to each
other so that at least one of said nano-tube extends below and connects at
least two of the plurality of electrodes.” Appeal Br. 25 (Claims App’x).
Appellants argue that the Examiner has not adequately explained why it
would be obvious to implement this recited feature. Id. at 20; Reply Br. 17.
The Examiner cites Zhang to support this point (Ans. 28—29), but the
Examiner cites no art that uses this electrode configuration or that teaches
any reason to use this configuration as compared to other possibilities.
Rather, as Appellants note, Figure IB of Choi shows electrodes in a circular
pattern. Although it is possible that the Examiner may be correct that such
configurations are “well-known in the art” (Ans. 28 (emphasis removed)),
the Examiner has not identified adequate evidence in the current record to
support this proposition. We decline to attempt to identify a teaching
concerning this configuration in the first instance on appeal. Accordingly,
we do not sustain the Examiner’s rejection of claim 2.
Rejection 2, claims 3 and 4. Claim 3 recites “[t]he transistor as
defined in claim 1 wherein said substrate comprises a doped silicon layer
covered at least in part by an electrical insulating layer.” Appeal Br. 25
(Claims App’x). Claim 4 recites “[t]he transistor as defined in claim 3
wherein said insulating layer comprises an oxide layer.” Id.
The Examiner finds that such layers are well-known in the art as
evidenced by Zhang and Choi and explains why a semiconductor device
would not work without the recited configuration. Ans. 29—30. Appellants
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do not persuasively rebut the Examiner’s findings. Reply Br. 18—19.
Rather, Appellants argue that the Examiner previously stated that “Zhou and
Choi are only cited to teach an artisan that only semiconducting nanotubes
can be used . . . .” Id. at 18 (emphasis removed). The Examiner’s statement,
however, does not preclude the Examiner from also using these references to
evidence semiconductor basics.
Appellants also argue that Liebau teaching a FET would contradict the
Examiner’s contention that it is necessary to cover the semiconductor layer,
in part, to ensure proper operation. Id. at 18—19. Appellants do not
persuasively explain, however, why this is a contradiction especially
considering that claim 3 only requires a partial covering.
We thus, sustain the Examiner’s rejection of claims 3 and 4.
Rejection 2, claims 5 and 6. Claim 5 recites “[t]he transistor as
defined in claim 1 wherein each said electrode comprises gold.” Appeal Br.
25 (Claims App’x). Claim 6 recites “[t]he transistor as defined in claim 1
wherein the electrodes comprise a titanium and gold alloy.” Id. at 26.
Appellants argue that the Examiner speculates by finding that use of these
materials would improve conductivity. Appeal Br. 21.
The Examiner finds, however, that gold has higher conductivity than
aluminum (Ans. 30). Appellants dispute the lack of citation for the
Examiner’s finding but do not dispute the finding’s accuracy (Reply Br. 19).
We agree with the Examiner that the use of gold for conductivity and for
circuits is exceptionally well known. We, therefore, sustain the Examiner’s
rejection of claim 5.
The Examiner, however, does not present any similar findings for an
alloy of gold and titanium and does not present evidence establishing that
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such an alloy is a known substitution in this context. Reply Br. 19.
Therefore, based on the record before us, do not sustain the Examiner’s
rejection of claim 6.
Rejection 2, claim 14. Claim 14 recites “[t]he transistor as defined in
claim 1 wherein the carbon nano-tubes comprise single wall carbon nano­
tubes.” Appeal Br. 27 (Claims App’x). Appellants argue that Liebau
mentions that the nanotubes maybe multi-walled. Id. Appellants, however,
do not persuasively dispute the Examiner’s finding that Liebau teaches
single wall carbon nano-tubes. Final Act. 3; see also Liebau 117. Because
all embodiments of the art must be considered, Appellants’ argument does
not identify reversible error. See In re Lamberti, 545 F.2d at 750. We thus,
sustain the Examiner’s rejection of claim 14.
Rejection 2, claims 16 and 18. Claim 16 recites carbon nano-tube
bundle density: “[t]he transistor as defined in claim 14 wherein the single
wall carbon nano-tubes are randomly disposed on the surface of said
substrate in bundles that comprise single wall carbon nano-tubes wherein the
bundles are disposed on the surface of said substrate at a density of from 3 to
6 bundles per 100 pm2.” Appeal Br. 27 (Claims App’x). Likewise, claim 18
recites: “[t]he transistor as defined in claim 1 wherein the carbon nano-tubes
are randomly disposed on the surface of said substrate in bundles and further
wherein between 375 and 500 bundles extend below and connect one of said
plurality of electrodes to an adjacent electrode.” Id. at 28.
Appellants’ arguments as to these recitations were also presented in
the context of claim 20 which has a similar recitation. Appeal Br. 18—19,
22. The Examiner finds that Liebau and Zhou each teach that use of bundles
of carbon nanotubes is conventional and well-known in the art. Ans. 27—28;
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see also Liebau 12 (“random distributions of bundles of nanotubes ... are
usually obtained”). The Examiner further finds that a person of skill in the
art would adjust the density of nano-tube bundles to achieve different current
densities. Ans. 28. Appellants do not persuasively dispute the Examiner’s
finding of fact or even assert that the finding is factually wrong. We
therefore also adopt the Examiner’s finding. The Examiner’s finding
supports that bundle density is a result effective variable and supports the
Examiner’s obviousness conclusion. See In re Boesch, 617 F.2d 272, 276
(CCPA 1980) (“[Djiscovery of an optimum value of a result effective
variable in a known process is ordinarily within the skill of the art.”); In re
Aller, 220 F.2d 454, 456 (CCPA 1955) (“where the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.”).
Instead of arguing against the Examiner’s finding that a person of skill
would have adjusted density, Appellants argue that Liebau only teaches
bundled nanotubes in describing “a then-prior art process. . . .” Reply Br.
15. The Examiner, however, may rely on Liebau for all that it teaches, and,
as explained above, it is the prior art process of Liebau’s paragraph two that
the Examiner also relies upon as teaching the use of carbon nanotubes as a
FET. Appellants’ argument therefore does not identify reversible error, and
we sustain the Examiner’s rejection of claims 16 and 18.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims 1,
3, 4, 5, 14, 16, and 18 as obvious. We reverse the Examiner’s rejection of
claims 1—6, 14, 16, and 18 as failing to comply with the written description
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requirement of 35 U.S.C. § 112. We reverse the Examiner’s rejection of
claims 2, 6, and 20 as obvious.
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-IN-PART
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