Ex Parte McKeigue et al

Board of Patent Appeals and Interferences

Jan 31, 2012

11974952 (B.P.A.I. Jan. 31, 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.
11/974,952 10/17/2007 Kevin McKeigue M07A220 6164
20411 7590 02/01/2012
The BOC Group, Inc.
575 MOUNTAIN AVENUE
MURRAY HILL, NJ 07974-2082
EXAMINER
GREGORIO, GUINEVER S
ART UNIT PAPER NUMBER
1732
MAIL DATE DELIVERY MODE
02/01/2012 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 KEVIN MCKEIGUE, WEIBIN JIANG, and
RAMACHANDRAN KRISHNAMURTHY
____________

Appeal 2010-010284
Application 11/974,952
Technology Center 1700
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and JAMES C.
HOUSEL, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 27-33. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants claim a method of making carbon nanotubes comprising
subjecting a combined hydrocarbon and carbon dioxide stream to a process
of conversion to form a converted gas stream of hydrogen, carbon
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Application 11/974,952

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monoxide, unreacted carbon dioxide, and unreacted hydrocarbon which are
separated into various streams including a carbon monoxide stream which is
directed to a unit for producing carbon nanotubes and a waste stream of
carbon dioxide, and "recycling the waste stream to the conversion process
for use as the carbon dioxide stream" (claim 27).
Representative claim 27, the sole independent claim on appeal, reads
as follows:
27. A method for producing carbon nanotubes comprising:

combining a hydrocarbon stream and a carbon dioxide stream to form
a combined stream;

subjecting the hydrocarbon in the combined stream to a process of
conversion to form a converted gas stream comprising hydrogen, carbon
monoxide, unreacted carbon dioxide, and unreacted hydrocarbon;

separating carbon dioxide from the converted gas stream to form a
principal stream comprising the carbon monoxide, hydrogen and unreacted
hydrocarbon;

recycling the separated carbon dioxide to the conversion process;

separating the hydrogen and unreacted hydrocarbon from the principal
stream in a cold box to form a carbon monoxide stream and a by-product
stream comprising the hydrogen and the unreacted hydrocarbon;

recycling a portion of the by-product stream to the conversion process
for use as fuel;

treating another portion of the by-product stream to produce a high
pressure hydrogen product;

directing the carbon monoxide stream to a carbon nanotube
production unit to produce carbon nanotubes and a waste stream of carbon
dioxide; and
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Application 11/974,952

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recycling the waste stream to the conversion process for use as the
carbon dioxide stream.

The references listed below are relied upon by the Examiner as
evidence of obviousness:

Krishnamurthy 5,112,590 May 12, 1992
Hwang 6,977,067 B2 Dec. 20, 2005
Aasberg-Petersen 7,241,401 B2 Jul. 10, 2007
Kandziora DE 3427804 A1 July 27, 1984

Pavel Nikolaev et al., Gas-Phase Catalytic Growth of Single-Walled Carbon
Nanotubes from Carbon Monoxide, 313 Chem. Physics Letters 91-97 (1999)
(hereafter Nikolaev).

Under 35 U.S.C. § 103(a), the Examiner rejects:
claims 27-33 as unpatentable over Nikolaev in view of Krishnamurthy
and Kandziora;
claim 28 as unpatentable over the references applied against claim 27
and further in view of Aasberg-Petersen; and
claim 31 as unpatentable over the references applied against claim 27
and further in view of Hwang.
We will sustain the above rejections for the reasons expressed in the
Answer. The following comments are added for emphasis.

The Rejection based on Nicolaev, Krishnamurthy and Kandziora
Appellants present no separate arguments directed to the dependent
claims under rejection (Br. 9-15). Accordingly, these dependent claims will
stand or fall with independent claim 27.
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We share the Examiner's conclusion that it would have been obvious
to provide Nikolaev's method for reacting carbon monoxide to make carbon
nanotubes (and a carbon dioxide waste stream) with a carbon monoxide
generating process including Krishnamurthy's reformer process (i.e.,
conversion process) for producing carbon monoxide, hydrogen, unreacted
carbon dioxide, and unreacted hydrocarbon which are subjected to the
separating and recycling steps taught by Krishnamurthy and Kandziora in
order to obtain carbon monoxide for Nikolaev's method (Ans. 4-6).
Appellants argue that there is no reason to so combine these
references (Br. para. bridging 14-15).
We cannot agree. For the reasons detailed by the Examiner (Ans. 4-6
and 9-11), an artisan would have combined the references in the manner
proposed above in order to obtain the carbon monoxide needed by Nikolaev
via reforming, separating and recycling techniques which are evinced by
Krishnamurthy and Kandziora as known in the prior art for effectively and
efficiently obtaining carbon monoxide.
We also share the Examiner's conclusion that, for efficiency and
environmental reasons, it would have been obvious to recycle the waste
stream of carbon dioxide from Nikolaev's method to the reformer resulting
from the above discussed prior art combination particularly since
Krishnamurthy teaches recycling carbon dioxide to a reformer (Ans. 4-6,
para. bridging 9-10).
Appellants argue that this obviousness conclusion by the Examiner is
"clearly based solely on hindsight as there is nothing in any of the cited
references to suggest such limitations or modifications" (Br. para. bridging
15-16).
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Appellants' argument is unpersuasive. While no single reference
teaches or would have suggested recycling carbon dioxide from a method of
making nanotubes to a reformer (i.e., conversion) process for producing
carbon monoxide, this is because no single reference teaches the
combination of such a method and reformer process. However, the
combined teachings of the applied references would have suggested this
recycling step in order to enhance efficiency and reduce environmental
impact. In this regard, we remind Appellants that the test for obviousness is
what the combined teachings of the applied references would have suggested
to those with ordinary skill in the art. See In re Keller, 642 F.2d 413, 425
(CCPA 1981).

The Remaining Rejections
Appellants state that the additional references applied in these
rejections would not have been combined with the previously discussed
references and/or do not overcome the deficiencies thereof (Br. 16-17).
As indicated above and in the Answer, the references applied in
rejecting claim 27 teach or would have suggested the claim 27 limitations
and accordingly are not deficient as Appellants believe. Further, the
Examiner articulates well taken rationale in support of concluding that the
references applied in the remaining rejections would have been combined in
the manner proposed (Ans. 7-8, 11-13). Appellants' unembellished
statement to the contrary reveals no error in the Examiner's rationale.

Conclusion
The decision of the Examiner is affirmed.
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Application 11/974,952

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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)(1)(iv).
AFFIRMED

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