11974954 (B.P.A.I. Jan. 23, 2012)

Ex Parte McKeigue et al

Board of Patent Appeals and InterferencesJan 23, 2012

11974954 (B.P.A.I. Jan. 23, 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. 11/974,954 10/17/2007 Kevin McKeigue M07A218 6157 20411 7590 01/24/2012 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 01/24/2012 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 2010-009849 Application 11/974,954 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and PETER F. KRATZ, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 27-48. Appellants state that "all rejections of claims 45 or 46 have now been overcome" (Br. 6). The Examiner agrees with Appellants' statement of the status of claims (Ans. 2) and correspondingly presents no rejection of claims 45 and 46 in the Answer. Accordingly, we dismiss the appeal as to claims 45 and 46, thereby leaving Appeal 2010-009849 Application 11/974,954 2 for our consideration claims 27-44, 47, and 48. We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM. Appellants claim a method of making carbon nanotubes comprising mixing a hydrocarbon stream and a carbon dioxide stream in a conversion reactor to form a converted gas stream of hydrogen, carbon monoxide, unreacted carbon dioxide, and unreacted hydrocarbon which are separated into a principal stream comprising carbon monoxide and unreacted carbon dioxide and a by-product stream comprising hydrogen and unreacted hydrocarbon, recycling the by-product stream to the conversion reactor for use as fuel, directing the principal stream to a unit for producing carbon nanotubes and a waste stream of carbon dioxide, and "recycling the waste stream to the conversion reactor for use as the carbon dioxide stream" (claim 27). Representative claim 27, the sole independent claim on appeal, reads as follows: 27. A method of making carbon nanotubes comprising: mixing a hydrocarbon stream and a carbon dioxide stream in a conversion reactor to form a converted gas stream comprising hydrogen, carbon monoxide, unreacted carbon dioxide, and unreacted hydrocarbon; separating in a separator the hydrogen and the unreacted hydrocarbon from the converted gas stream to form a principal stream comprising the carbon monoxide and the unreacted carbon dioxide and a by-product stream comprising the hydrogen and the unreacted hydrocarbon; recycling the by-product stream to the conversion reactor for use as fuel for the conversion reactor; Appeal 2010-009849 Application 11/974,954 3 directing the principal stream to a carbon nanomaterial production unit to produce carbon nanotubes and a waste steam [sic, stream] of carbon dioxide; and recycling the waste stream to the conversion reactor for use as the carbon dioxide stream. The references listed below are relied upon by the Examiner as evidence of obviousness: Minderhoud 4,587,008 May 06, 1986 Krishnamurthy 5,112,590 May 12, 1992 Hwang 6,977,067 B2 Dec. 20, 2005 Choudhary 2006/0093550 A1 May 04, 2006 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). Shengchun Yan et al., Hydrogen-Permselective SiO2 Membrane Formed in Pores of Alumina Support Tube by Chemical Vapor Deposition with Tetraethyl Orthosilicate, 33 Ind. Eng. Chem. Res. 2096-2101 (1994) (hereafter Yan). Under 35 U.S.C. Â§ 103(a), the Examiner rejects: claims 27, 30-35, 41-43, 47, and 48 as unpatentable over Nikolaev in view of Choudhary and Krishnamurthy; claims 28 and 29 as unpatentable over the references applied against claim 27 and further in view of Minderhoud; claims 36-40 as unpatentable over the references applied against claim 27 and further in view of Yan; and claim 44 as unpatentable over the references applied against claim 27 and further in view of Hwang. Appeal 2010-009849 Application 11/974,954 4 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, Choudhary, and Krishnamurthy 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. 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 with a carbon monoxide generating system including a reformer (i.e., conversion reactor) for producing a mixture comprising carbon monoxide and hydrogen (i.e., syngas) in view of Choudhary and to provide the reformer with the separating and recycling steps taught by Krishnamurthy in order to obtain a principal stream of carbon monoxide for Nikolaev's method and a by-product stream of hydrogen for recycle to the reformer for use as fuel (Ans. 4-5). Appellants argue that there is no reason to so combine these references (Br. 14). We cannot agree. For the reasons detailed by the Examiner (Ans. 4-5 and 10-13), 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 Choudhary and Krishnamurthy as known in the prior art for effectively and efficiently obtaining carbon monoxide. Appeal 2010-009849 Application 11/974,954 5 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. 5, 12- 13). 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 14-15). 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 for producing carbon monoxide, this is because no single reference teaches the combination of such a method and reformer. However, the combined teachings of the applied references would have suggested this recycling step in order to enhance efficiency and reduce environmental impact as fully explained by the Examiner. 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. 15-18). Appeal 2010-009849 Application 11/974,954 6 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. 7-10, 13-15). Appellants' unembellished statement to the contrary reveals no error in the Examiner's rationale. Conclusion The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§1.136(a)(1)(iv). AFFIRMED ssl