Ex Parte Mau et al

Board of Patent Appeals and Interferences

Apr 27, 2010

09979792 - (D) (B.P.A.I. Apr. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ALBERT MAU, LI-MING DAI, and
SHAOMING HUANG
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Appeal 2009-003253
Application 09/979,792
Technology Center 1700
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Decided: April 27, 2010
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Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision to
reject claims 1-25 and 271. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 The Examiner withdrew the rejection of claim 26 (Ans. 3).
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Appellants’ invention relates to a process of synthesizing a layer of aligned
carbon nanotubes on substrate, applying a layer of a second substrate to a top
surface of the aligned nanotube layer, and removing the first substrate in order to
transfer the aligned nanotube layer to the second substrate (Spec. 3:10-22). This
“increases the potential applications of aligned nanotube films” and “provides a
convenient route” to having a nanotube layer on a substrate not capable of
supporting nanotube growth (Spec. 3:21-26).
Claim 1 is illustrative (emphasis added):
1. A process for preparing a substrate-supported aligned carbon nanotube
film including:

synthesising a layer of aligned carbon nanotubes on a substrate capable of
supporting nanotube growth, such that the aligned carbon nanotubes are
perpendicular to the surface of the substrate,

applying a film of a second substrate to a top surface of said synthesised
layer of aligned carbon nanotubes, and

removing said substrate capable of supporting nanotube growth to provide
an aligned carbon nanotube film supported on said film of a second
substrate.

The Examiner maintains, and Appellants seek review of, the sole rejection
on appeal of claims 1-25 and 27 under 35 U.S.C. § 103(a) as unpatentable over the
combined prior art of Nakamoto2, AAPA3, Li4, and Hsu5.

2 US Patent No. 6,097,138, issued August 1, 2000
3 Appellants Admission of Prior art (AAPA), Spec. 1, l. 25 to Spec. 2, l. 10
4 “Large-Scale Synthesis of Aligned Carbon Nanotubes” Science, American
Association for the Advancement of Science, US vol. 274, pp. 1701-1703,
XP000877484 (Oct. 17, 1996)
5 US Patent No. 6,333,598 B1, issued December 25, 2001
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Appellants argue claims 1-18, 24, 25, and 27 as a group (App. Br. 5-11). In
accordance with 37 C.F.R. § 41.37(c)(1)(vii), we select claim 1 as representative of
this group. We will also address claims 19, 20, and 21-23 that are separately
argued by Appellants (App. Br. 11-12).
ISSUES
1) Has the Examiner erred in his determination that the method of claim 1 is
obvious over the applied prior art with regard to the requirement that “the aligned
carbon nanotubes are perpendicular to the surface of the substrate” as recited
therein?
2) Has the Examiner erred in his determination that Nakamoto’s description
of applying a resin and drying it renders obvious the claimed steps of “applying a
film of a second substrate” as recited in claim 1?
Upon considering the totality of the evidence, we answer both of these
questions in the negative.
Findings of Facts (FF)
We find the following facts relevant to deciding the issues.
1. The plain language of claim 1 does not explicitly require that all the
nanotubes are aligned perpendicular to the substrate (see claim 1).
2. Appellants admit that at least some of the nanotubes of Nakamoto are
perpendicular to the substrate, as depicted in Figs. 1A-B of Nakamoto
(Reply Br. 4).
3. Appellants’ admission of prior art and Li each exemplify that forming
aligned nanotubes that are perpendicular to the substrate upon which they
are formed is known and desirable (e.g., Appellants’ Spec. 1: 25-26 “it is
highly desirable to prepare aligned carbon nanotubes”; Spec. 2:8-10 “[in
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the known approaches] which involve synthesis-induced alignment, the
carbon nanotubes are aligned perpendicularly to the substrate”).
4. Appellants’ Specification describes that the claimed step of “applying a
film” includes spraying, brushing, or “otherwise apply[ing] a polymer in
such a way that a polymer film is formed on the surface”, and that the
polymer may be cured to form a film (Spec. 6:1-6; emphasis added).
5. The Examiner correctly finds that Nakamoto’s disclosure of applying a
resin and drying it (Ans. 8; Nakamoto, col. 9, ll. 8-15) reads on
Appellants’ claimed “applying a film of a second substrate” as recited in
claim 1.
6. The combined teachings of Nakamoto, AAPA, and Li disclose or suggest
all of the claim 1 limitations, such that reliance on Hsu is unnecessary to
establish obviousness (see also Ans. 8)
7. Thus, Nakamoto broadly describes every step as set out in claim 1,
except for explicitly describing that aligned nanotubes are synthesized
which are perpendicular to the substrate.

Principles of Law
An improvement in the art is obvious if "it is likely the product not of
innovation but of ordinary skill and common sense." KSR Int’l. v. Teleflex Inc.,
550 U.S. 398, 421 (2007). Therefore, in making a determination of obviousness,
one must consider the teachings of the reference in light of the knowledge and
capabilities of those of ordinary skill in the art. See In re Paulsen, 30 F.3d 1475,
1480 (Fed. Cir. 1994) (“[A] prior art reference must be ‘considered together with
the knowledge of one of ordinary skill in the pertinent art.’”); In re Sovish, 769
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F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of the artisan, rather
than the lack thereof); and In re Nomiya, 509 F.2d 566, 570-71 (CCPA 1975) (The
admittedly known prior art disclosed in an appellant’s specification may be used in
determining the patentability of a claimed invention.).
It is well established that “[a]dmissions in the specification regarding the
prior art are binding on the patentee for purposes of a later inquiry into
obviousness.” PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342,
1362 (Fed. Cir. 2007).

Analysis
Given that Nakamoto discloses a process of synthesizing nanotubes on a first
substrate and transferring them to a polymer film layer, and that it was known in
the art to synthesize a layer of aligned nanotubes (see, FF), we determine that the
evidence as a whole supports the Examiner’s conclusion of obviousness.
We therefore agree with the Examiner’s conclusion that using the technique
of Nakamoto on an admittedly known aligned nanotube layer as synthesized, in
order to transfer it to a polymer film as shown in Nakamoto, would have been
nothing more than using an admittedly known alternative configuration of
nanotubes in accordance with its known function for the predictable result of
creating an aligned nanotube layer on a polymeric substrate. See KSR, 550 U.S. at
416 (“The combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results.”).
Moreover, we agree with the Examiner that with respect to the process of
claim 1, Appellants have not presented any persuasive technical reasoning or
evidence to rebut the Examiner’s position that claim 1 encompasses Nakamoto’s
nanotubes, some of which are admittedly aligned perpendicular to the surface of
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the substrate (see FF). It is axiomatic that claim language must be given the
broadest reasonable interpretation, and since claim 1 uses open ended language
(e.g., “including”), the Examiner’s claim interpretation is reasonable.
With respect to claim 1, Appellants’ arguments that Hsu’s process is
completely different that Nakamoto’s such that its emitter layer may not be
reasonably seen as an alternative for the polymeric layer in the process of
Nakamoto (App. Br. 9, 10; Reply Br. 11) are unavailing, since Hsu is unnecessary
for the rejection of claim 1 (see FF).
However, separately argued dependent claims 21-23 require the second
substrate to be a metal, alloy, or metal oxide capable of film formation. We agree
with Appellants that there is insufficient evidence or rationale set forth by the
Examiner to conclude that the emitter layer of Hsu is an alternative to the molten
polymer layer of Nakamoto, given the numerous differences in the process of each
reference (App. Br. 9, 10). Accordingly, the rejection as applied to dependent
claims 21-23 cannot be sustained.
On the other hand, with respect to separately argued claims 19 and 20,
Appellants’ contentions that the applied prior art does not teach or suggest that the
first substrate (that is, the substrate capable of supporting nanotube growth) is
coated with a metal oxide or semiconductor material are unavailing, since neither
claim 19 nor claim 20 requires the first substrate to be one of these materials.
Claim 17 requires that the first substrate be a metal, metal oxide, or semiconductor
material. Claims 19 and 20 merely further define the metal oxide or semiconductor
material of the group of alternative materials set out in claim 17, but do not
positively call for the substrate to be a metal oxide, or a semiconductor material.
Furthermore, the Examiner’s finding that Nakamoto describes the substrate
upon which the nanotubes are grown as being coated with a metal is undisputed
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(Ans. 6; see generally App. Br.; Reply Br.). Even assuming arguendo that the
claim did require the substrate to be coated with a metal oxide or a semiconductor
material, Appellants have not directed us to any credible technical reasoning or
evidence sufficient to refute the Examiner’s reasonable position of obviousness for
the alternative known choices of metal oxide and semiconductor material on a
substrate to support nanotube growth (e.g., para. bridging Ans. 6-7, Ans. 9; see
generally App. Br.; Reply Br.).
We have considered Appellants’ other arguments in the Briefs, but do not
find any of them persuasive for reasons substantially set forth by the Examiner in
the Answer.
CONCLUSION
In light of the evidence as a whole, Appellants have failed to identify
reversible error in the Examiner’s determination that the claims would have been
obvious over the prior art.
Accordingly, on the record before us, we sustain the rejection of claims 1-
20, 24, 25, and 27 as maintained by the Examiner.6
ORDER

Upon consideration of the appeal, and for the reasons given herein, it is
ORDERED that the decision of the Examiner rejecting claims 1-20, 24, 25,
and 27 over the prior art is affirmed, however the decision to reject claims 21 to 23
over the applied prior art is reversed.

6Only those arguments actually made by Appellants have been considered in this
decision. Arguments which could have made but Appellants chose not to make
have not been considered and are deemed to be waived. See 37 C.F.R. §
41.37(c)(1)(vii) (2008).
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FURTHER ORDERED that 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

PL initials:
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