Ex Parte Das et al

Patent Trial and Appeal Board

Jun 20, 2014

12228529 (P.T.A.B. Jun. 20, 2014)

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