Ex Parte Das et alDownload PDFPatent Trial and Appeal BoardJun 20, 201412228529 (P.T.A.B. Jun. 20, 2014) Copy Citation 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. 12/228,529 08/13/2008 Biswajit Das 777.031US1 5585 7590 06/23/2014 Mark A. Litman, Technology Transfer Officer Office of Economic Development University of Nevada, Las Vegas 4505 S. Maryland Parkway - Box 451092 FDH Room 314 Las Vegas, NV 89154-1092 EXAMINER SONG, MATTHEW J ART UNIT PAPER NUMBER 1714 MAIL DATE DELIVERY MODE 06/23/2014 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BISWAJIT DAS and MYUNG B. LEE ____________________ Appeal 2013-000169 Application 12/228,529 Technology Center 1700 ____________________ Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and LINDA M. GUADETTE, Administrative Patent Judges. SMITH, 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 through 6, 12 through 15 and 18-21.1 We have jurisdiction under 35 U.S.C. § 6(b). 1 Both Appellants and the Examiner appear to believe that dependent claims 7-11 have been rejected and are under appeal. We have reviewed the record Appeal 2013-000169 Application 12/228,529 2 The claims are directed to a method of growing an elongate nanoelement. App. Br. 7. Claim 1 illustrates the subject matter on appeal and is reproduced below: 1. A method of growing an elongate nanoelement from a growth surface comprising: a) cleaning a growth surface on a base element; b) providing an ultrahigh vacuum reaction environment of less than 10-7 Torr over the cleaned growth surface; c) generating a reactive gas of an atomic material to be used in forming the nanoelement; d) projecting a stream of the reactive gas at the growth surface within the reactive environment while maintaining a vacuum of at most l.times.10.sup.-4 Pascal; e) growing the elongate nanoelement from the growth surface within the environment while maintaining the pressure of step c); f) after a desired length of nanoelement is attained within the environment, stopping direction of reactive gas into the environment; and g) returning the environment to an ultrahigh vacuum condition of less than 10-7 Torr. The Examiner relied on the following references in rejecting the appealed subject matter: Mitsui US 2005/0002849 A1 Jan. 6, 2005 Allara US 2005/0118092 A1 Jun. 2, 2005 Jin US 2008/0268288 A1 Oct. 30, 2008 and find no rejection addressing these claims. See Answer and Appeal Brief and Final Office Action, generally. Accordingly, claims 7-11 are not before us for consideration on appeal. Appeal 2013-000169 Application 12/228,529 3 Hoshi2 JP 2002-069643 Mar. 8, 2002 Appellants, Appeal Brief 9, request review of the following rejections from the Examiner’s Final Office Action: I. Claims 1-5, 12-15 and 21 rejected under 35 U.S.C. § 103(a) as unpatentable over Mitsui, Hoshi and Allara. II. Claims 6 and 18-20 rejected under 35 U.S.C. § 103(a) as unpatentable over Mitsui, Hoshi, Allara and Jin. OPINION The dispositive issue for this appeal is: Did the Examiner err in determining that that the combined teachings of Mitsui and Hoshi would have led one skilled in the art to a method of growing an elongate nanoelement from a growth surface comprising the step of projecting a stream of a reactive gas at a growth surface as required by the subject matter of independent claims 1, 12 and 21?3, 4 We answer the question in the affirmative and REVERSE for the reasons presented by Appellants. We refer to the Examiner’s Answer for a complete statement of the Examiner’s rejections. Final Act. 2-6. The Examiner found that Mitsui 2 We rely on a machine translation of the Hoshi reference in our discussion of the rejection. The machine translation was made of record by the Examiner on April 12, 2011. 3 We limit our discussion to independent claim 1. 4 A discussion of Allara, relied upon in the principal rejection, and Jin, relied upon in the separate rejection of claims 6 and 18-20 under 35 U.S.C. § 103(a) (Ans. 7-8), is unnecessary for disposition of the present appeal. The Examiner relied upon these references for features not related to the dispositive issue. Appeal 2013-000169 Application 12/228,529 4 discloses a method of forming an elongated nanoelement (nanotube) using an ultrahigh vacuum CVD growth apparatus. The Examiner found that Mitsui suggests projecting a stream of the reactive gas to the growth surface within the reaction environment. Final Act. 2-3; Mitsui ¶¶ 0057, 0058. The Examiner found that Hoshi discloses a method of producing a high quality nanotube that includes projecting a stream at a growth surface (via gas supply line 5). Final Act. 3; Hoshi Figure 1, ¶¶ 0007, 0012. Claim 1 requires projecting a steam of reactive gas at the growth surface to grow the nanoelement. Appellants argue that Mitsui and Hoshi do not disclose projecting a stream of reactive gas at a growth surface. App. Br. 10. According to the Specification, projecting a stream of reactive gas means that incident energy and electronic state of a cracked hydrocarbon species (as generated by the RF plasma source) will remain unchanged from the time they leave the source until they hit the surface. This is because the cracked hydrocarbons species do not collide with each other or with back ground gases [as] until it hits the surface, so that it is the species themselves that directly impact the surface and may attach or react thereto. There is no intermediate reaction with the majority (at least 50%, at least 70%, at least 85%, at least 95%) of the cracked hydrocarbon species before contact with the surface or other species attached or reacted to the surface. Thus, [the] process allows the possibility of growing carbon nanotubes (CNT) using a beam of cracked hydrocarbon species that have certain specific distribution of the electronic state and molecular species. Spec. 10. Appeal 2013-000169 Application 12/228,529 5 The Examiner responds that Hoshi projects a stream of reactive gases because Hoshi teaches an inlet 5 which is directed above a substrate S. Ans. 10; Hoshi Figure 1. We agree with Appellants that the Examiner has not established a prima facie case of obviousness. The Examiner has not directed us to a portion of Mitsui and Hoshi that describes or suggests projecting a stream of gases onto a growth surface as required by the subject matter of independent claim 1.While the Examiner reasons that Hoshi’s Figure 1 discloses projecting a stream of reactive gases, the Examiner has not directed us to any portion of Hoshi that discloses the force, speed or flow rate at which Hoshi’s reactive gases are being fed to support such reasoning. That is, the Examiner has not provided a technical reason to believe Hoshi’s reactive gases species do not collide with each other or with background gases until it hits the target surface. The Examiner has also not explained why it is believed that Mitsui’s reactive gases species do not collide with each other or with background gases until they hit the target surface. Given this and Appellants’ disclosure above, the Examiner has not adequately explained why one skilled in the art would have understood Mitsui’s and Hoshi’s dispersion of reactive gases in a chamber to be projecting a stream of reactive gases as claimed. Accordingly, we reverse the Examiner’s prior art rejections of claims 1-6, 12-15 and 18-21 for the reasons presented by the Appellants and given above. Appeal 2013-000169 Application 12/228,529 6 ORDER The Examiner’s prior art rejections of claims 1-6, 12-15 and 18-21 are reversed. REVERSED tc Copy with citationCopy as parenthetical citation