Ex Parte Keller et al

Board of Patent Appeals and Interferences

Jul 24, 2012

11857618 (B.P.A.I. Jul. 24, 2012)

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.
11/857,618 09/19/2007 Teddy M. Keller 98641-US2 1249
26384 7590 07/25/2012
NAVAL RESEARCH LABORATORY
ASSOCIATE COUNSEL (PATENTS)
CODE 1008.2
4555 OVERLOOK AVENUE, S.W.
WASHINGTON, DC 20375-5320
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
07/25/2012 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 TEDDY M. KELLER,
MATTHEW LASKOSKI,
and JEFFREY W. LONG
__________

Appeal 2010-007218
Application 11/857,618
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

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A. STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s
decision finally rejecting claims 1-26, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal is directed to a method of making a carbon
nanotube composition (claims 13-24 and 26) and a carbon nanotube composition
produced by this method (claims 1-12 and 25). Claim 13, reproduced below, is
representative of the subject matter on appeal.
13. A method comprising:
heating a precursor composition under a non-oxidizing or
reducing atmosphere and under thermal conditions effective to
form a carbon composition comprising carbon nanotubes and
amorphous carbon;
wherein the precursor composition comprises a mixture or
complex of:
a transition metal compound; and
an organic compound that chars at elevated temperatures;
and
calcining the carbon composition in the presence of oxygen
under thermal conditions that oxidize and vaporize the
amorphous carbon without oxidizing the carbon nanotubes.
App. Br., Claims Appendix.1
The Appellants seek review of the following grounds of rejection:
(1) the rejection of claims 1-5, 7-17, and 19-26 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Keller2, Smalley3 and Ando4; and

1 Appeal Brief dated January 19, 2010.
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(2) the rejection of claims 6 and 18 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Keller, Smalley, Ando, and Keller 619.5
In the Appeal Brief, the Appellants present separate arguments for three
groups of claims in rejection (1), i.e., claims 1-5, 7, 8, 13-17, 19, 20, 25, and 26,
claims 9 and 21, and claims 10-12 and 22-24. Thus, we will focus our discussion
on claims 13, 21 and 22 in rejection (1). 37 C.F.R. § 41.37(c)(1)(vii) (2010).
The Appellants do not present separate arguments for claims 6 and 18 in
rejection (2). See App. Br. 7. Therefore, the patentability of claims 6 and 18 will
be based on the arguments set forth in support of the patentability of claim 13.
B. DISCUSSION
Keller discloses a process for producing a carbon nanotube composition.
The composition may contain up to 75% by weight or more of carbon nanotubes in
the form of single-wall carbon nanotubes, multi-walled carbon nanotubes, or both.
The carbon nanotube composition may also comprise any of carbon nanoparticles,
amorphous carbon, metal nanoparticles, and elemental metal. Keller, para. [0047].
There is no dispute on this record that Keller discloses the process recited in
claim 13 with the exception of the calcining step. Smalley discloses a purification
process, which includes an oxidation step, for removing amorphous carbon and
metal-containing catalyst particles from carbon nanotubes. See, e.g., Smalley, col.
5, ll. 56-60. The Examiner finds, and the Appellants do not dispute, that the
oxidation step disclosed in Smalley is a calcining step within the scope of claim 13.

2 US 2003/0108477 A1 published June 12, 2003.
3 US 6,752,977 B2 issued June 22, 2004.
4 JP 2006-182572 A published July 2006.
5 US 2003/0109619 A1 published June 12, 2003.
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Based on the foregoing, the only issue as to claim 13 is whether it would
have been obvious to one of ordinary skill in the art to remove amorphous carbon
from the carbon nanotube composition of Keller using the purification process
disclosed in Smalley.6
The Appellants argue Smalley uses gas-based processes to produce carbon
nanotube-containing powders whereas the carbon nanotubes in Keller are
contained in solid masses. The Appellants argue “[t]here is no showing that
processes applicable to the nanotubes of Smalley, such as solvation and self-
assembly (col. 3, lines 24-62), would be applicable to the solid products of Keller.”
App. Br. 5. Thus, according to the Appellants, “there is no showing that removal
of the impurities would be desirable in the products in Keller.” App. Br. 5.
The Appellants’ argument is not persuasive of reversible error. The
“processes applicable to the nanotubes of Smalley” referred to by the Appellants
relate to manipulating carbon nanotubes in specific applications not producing
carbon nanotubes. See Smalley, col. 3, ll. 24-62. Smalley discloses that
impurities, such as amorphous carbon and catalyst residues, are present in single-
wall carbon nanotubes formed by all known processes. See, e.g., Smalley, col. 3,
ll. 17-23. According to Smalley, “the absence of impurities in the nanotube
material enhances the performance of any and all materials, devices, and articles of
manufacture comprising nanotubes.” Smalley, col. 4, ll. 8-10. Thus, Smalley
suggests it would have been desirable to remove impurities, including amorphous
carbon, from the carbon nanotube composition produced by the Keller process.
See Ans. 4.

6 The Examiner relies on Ando as evidence that oxygen would selectively oxidize
and vaporize amorphous carbon but not carbon nanotubes. Examiner’s Answer
dated February 18, 2010 (“Ans.”), at 4, 8.
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The Appellants also argue Keller teaches away from adding the purification
steps disclosed in Smalley because these steps remove metal nanoparticles and
metal nanoparticles can promote desirable properties, such as electromagnetic or
magnetic properties, in the carbon nanotube composition of Keller. App. Br. 4-5.
The Appellants’ argument presumes the purification process disclosed in
Smalley removes all of the metal from the carbon nanotube material. This
presumption does not appear to be supported by the record. See Smalley, col. 5,
ll. 63-65 (“[i]n one embodiment, the material contains less than about 5 wt %
metal”). Moreover, to the extent that magnetic properties are desired in the
applications disclosed in Keller, the Examiner points out that magnetic properties
may also be imparted by the carbon nanotubes. Ans. 7; see also Keller, paras.
[0048], [0062]. Finally, Keller discloses the carbon nanotubes have useful
properties apart from magnetic properties. See Keller, para. [0062] (“The carbon
nanotube compositions may have useful structural, catalytic, electric, medical, or
magnetic properties, making them useful for many applications.”). In this regard,
we note that Keller and Smalley disclose some of the same applications. See, e.g.,
Keller, para. [0066] and Smalley, col. 6, ll. 16-18 (carbon nanotubes may be used
as electrodes).
Claim 21 recites that the “carbon nanotube composition is a porous, solid
material; a film; a fiber; or a shaped solid component.” App. Br., Claims
Appendix. The Appellants argue the oxidizing step disclosed in Smalley creates
cracks and fissures in the carbon that could fracture a solid article. Thus, the
Appellants appear to be arguing that one of ordinary skill in the art would not have
employed the oxidizing step disclosed in Smalley to remove amorphous carbon in
the carbon nanotube composition of Keller. App. Br. 6-7.
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This argument is not persuasive of reversible error. Smalley discloses that
metal impurities are encapsulated in amorphous carbon. Smalley, col. 7, ll. 8-12.
The cracks and fissures referred to in Smalley occur in the amorphous carbon and
facilitate removal of the metal particles during the purification process. Smalley,
col. 7, ll. 19-38. The Appellants have not directed us to any credible evidence
demonstrating that the cracks and fissures in the amorphous carbon would affect
the integrity of the purified carbon nanotube material.
As to claim 22, the Appellants argue Smalley discloses reduction of metal
oxide before complete removal of amorphous carbon. App. Br. 7.
Smalley discloses that the oxidation step may be followed by a reduction
step wherein any metal carbides, oxide, or hydroxides present are reduced.
Smalley, col. 8, ll. 35-38. To the extent that all of the amorphous carbon is not
removed in the oxidation step of Smalley, claim 22 does not require complete
removal of amorphous carbon prior to reduction of metal oxide. See In re Self, 671
F.2d 1344, 1348 (CCPA 1982) (patentability may not be based on limitations
which do not appear in the claims).
Based on the foregoing, the evidence of record weighs most heavily in favor
of the Examiner’s conclusion of obviousness.
C. DECISION
For the reasons set forth above and in the Examiner’s Answer, the
Examiner’s decision is affirmed.

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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a) (2010).
AFFIRMED

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