Ex Parte Slinker et al

Patent Trial and Appeal Board

Mar 22, 2017

12180106 (P.T.A.B. Mar. 22, 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.
12/180,106 07/25/2008 Keith A. Slinker TA-01054 9384
35979 7590
Bracewell & Giuliani LLP
P.O. Box 61389
Houston, TX 77208-1389
EXAMINER
MILLER, DANIEL H
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
03/24/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@bracewelllaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEITH A. SLINKER and VASILIKI Z. POENITZSCH
Appeal 2016-001701
Application 12/180,106
Technology Center 1700
Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 request review pursuant to 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 9, 11—14, 17—18, 20-21, and 232 of
Application 12/180,106. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
1 Appellants identify the real party in interest as Lockheed Martin Corp.
Appeal Brief dated Feb. 17, 2015 (“App. Br.”) 1.
2 Non-Final Rejection dated Sept. 11, 2014 (“Non-Final Act.”) 2—6. This
Decision also refers to the Examiner’s Answer dated Sept. 25, 2015 (“Ans.”)
and Appellants’ Reply Brief dated Nov. 9, 2015 (“Reply Br.”).
Appeal 2016-001701
Application 12/180,106
BACKGROUND
The subject matter on appeal relates to a carbon nanotube array
device, such as for use in a thermal interconnect or heat transfer device.
App. Br. 2, 4. Claim 9, reproduced below with italics indicating terms
further discussed in this Decision, is illustrative of the subject matter on
appeal:
9. A carbon nanotube array device, comprising
a plurality of vertically aligned carbon nanotubes, said
nanotubes having a first and a second end and a length
extending between the first and second ends;
a first coating infused to and bonding the first ends of the
carbon nanotubes together, wherein the first coating only
partially infuses along the lengths of the carbon nanotubes from
the first end;
a second coating infused to and bonding the second ends
of the carbon nanotubes together, wherein the second coating
only partially infuses along the lengths of the carbon nanotubes
from the second end; and
an exposed portion of the lengths of the carbon nanotubes
between the first and second coatings and free of infusion of the
first and second coatings so as to remain compliant under
compression.
Claims Appendix filed May 15, 2015 (“Claims Appx”) at 2.
THE REJECTIONS
1. Claims 9, 11—14, 17, 20-21, and 23 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Li3 and Zhang.4
Non-Final Act. 2.
3 Li et al., US 2005/0224220 A1 published Oct. 13, 2005 (“Li”).
4 Zhang et al., US 2004/0261987 Al published Dec. 30, 2004 (“Zhang”).
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Application 12/180,106
2. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Li, Zhang, and Zhang II.5 Non-Final Act. 5.
DISCUSSION
Rejection 1
Appellants argue all claims subject to the rejection as a group. App.
Br. 5—11. We choose claim 9 as representative; all other claims stand or fall
with claim 9. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Li discloses a thermal conductor device
comprising a vertical array of carbon nanotubes, having one end of the
nanotubes embedded in a metal layer, and the other end exposed and bent or
otherwise compliant under compression. Ans. 2 (providing citations to Li).
The Examiner further finds that in view of Li’s teaching that the free ends of
the nanotubes are bendable, a person of ordinary skill in the art would expect
the nanotubes to be compliant along their lengths. Ans. 3. The Examiner
acknowledges that Li does not teach coating the second ends of the carbon
nanotubes, but determines that it would have been obvious to a person of
ordinary skill in the art to provide a metal coating on the free ends of Li’s
nanotubes, as taught by Zhang, in order to enhance thermal transfer from the
nanotubes to the substrate and improve functionality of the thermal transfer
device. Ans. 3 (providing citations to Zhang).
Appellants argue that a person of ordinary skill in the art would have
been led away from infusing the free ends of Li’s nanotubes because the
second coating would not allow buckling and bending of those ends against
the substrate. App. Br. 7. Appellants rely on Li’s teaching that buckling and
5 Zhang et al., US 2008/0019097 A1 published Jan. 24, 2008 (“Zhang II”).
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Application 12/180,106
bending of the free ends is desirable for making good contact for heat
transfer, particularly where the contacting surface is rough. Id., citing Li ||
8, 11, 26. The Examiner responds that coating the free ends of Li’s
nanotubes would further promote Li’s function as a thermal conductor
because it would enhance thermal transport and allow the nanotubes to more
efficiently remove heat from the object they contact. Ans. 7. Appellants do
not dispute the function of Li’s nanotubes, and thus do not persuasively
dispute the Examiner’s finding that coating the free ends of the nanotubes
would be consistent with the goal of thermal transport. Moreover,
Appellants do not point to any teaching in Li that would discourage coating
the free ends.6 Therefore, Li does not teach away from the Examiner’s
proposed combination with Zhang that would provide a coating on the free
ends of Li’s nanotubes. See In re Fulton, 391 L.3d 1195, 1201 (Led. Cir.
2004) (prior art does not teach away from claimed subject matter merely by
disclosing a different solution to a similar problem unless the prior art also
criticizes, discredits, or otherwise discourages the solution claimed).
Appellants further argue that the Examiner erred by misinterpreting
Zhang, because Zhang does not teach infusing either end of nanotube array
257 with a coating partially along the lengths of the nanotubes. App. Br. 7—
10. In particular, Appellants argue that the growth ends of Zhang’s
nanotubes are simply in contact with layer 26 but not embedded and thus not
6 Appellants’ assertion that a coating infusing the free ends of Li’s
nanotubes would prevent the ends from making surface contact with a rough
object (Reply Br. 2) is attorney argument and lacks evidentiary support.
7 Labels to elements are presented in bold font, regardless of their
presentation in the original document.
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Application 12/180,106
coated by layer 26 (App. Br. 8) and that the lower ends of nanotubes 25 are
not embedded in layer 30 and thus layer 30 is not a coating. Id. at 9, citing
Zhang 122. Appellants acknowledge that the embodiment of Zhang 123
discloses that at least some of the nanotubes may be coated with metal to
reduce thermal resistance between the nanotubes and the surface of die 14 or
metal film 30, but argue that the reference to coated ends does not mean that
the coating would also bond the ends together, as required by claim 9,
because it would contradict Zhang’s teaching that the ends are free ends. Id.
at 10; Reply Br. 4.
Appellants’ arguments are not persuasive of reversible error in the
Examiner’s findings regarding Zhang. As the Examiner finds, and
Appellants do not dispute, Zhang 123 clearly discloses coating the ends of
the nanotubes to further reduce contact thermal resistance. Ans. 6. The fact
that Zhang 123 states “at least some” of the ends are coated does not
necessarily fail to teach bonding of those ends together (see Reply Br. 4),
because “at least some” would also have been understood to teach that all of
the ends are coated, and thus bonded together, supporting the Examiner’s
position that the resulting coating “is substantially identical and similar to
appellant’s disclosed coating(s).” Ans. 7. Further, Zhang’s disclosure of
alternative embodiments that include free ends, as relied upon by Appellants
(App. Br. 9; Reply Br. 3—4), does not persuade us of reversible error in the
Examiner’s findings regarding the scope and content of Zhang as a whole,
including reasonable inferences that a person of ordinary skill in the art
would have drawn from it. Finally, Appellants’ argument that the growth
ends (i.e., opposite the free ends) of Zhang’s nanotubes are not coated by
layer 26 (App. Br. 8) does not persuade us of reversible error, because the
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Examiner relied upon Li for its teaching that the growth ends of the
nanotubes would be coated. See Ans. 7.
Rejection 2
Appellants do not dispute the Examiner’s findings regarding Zhang II,
and rely on the same arguments against the combination of Li and Zhang as
discussed above for Rejection 1. Accordingly, we affirm Rejection 2 for the
same reasons as Rejection 1.
SUMMARY
We affirm the rejections of claims 9, 11—14, 17—18, 20-21, and 23.
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
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