Ex Parte Gross et al

Patent Trial and Appeal Board

Sep 27, 2016

12359662 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/359,662 01/26/2009
60476 7590 09/29/2016
PA TENT DOCKET DEPARTMENT
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
FIRST NAMED INVENTOR
Adam Franklin Gross
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
ATTORNEY DOCKET NO.
08-0913-US-NP
(24691-248)
CONFIRMATION NO.
4838
EXAMINER
GAITONDE, MEG HA MEHTA
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
09/29/2016 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):
USpatents@armstrongteasdale.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM FRANKLIN GROSS and
WILLIAM B. CARTER
Appeal2015-002523
Application 12/359,662
Technology Center 1700
Before KAREN M. HASTINGS, A VEL YN M. ROSS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision2 finally rejecting claims 1-12. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
The claims are directed to a method for bonding nano-elements to a
surface. Spec. i-f 6. Claim 1, reproduced below, is illustrative of the claims
on appeal.
1 Appellants identify the real party in interest as The Boeing Company.
Appeal Brief filed September 5, 2014 ("App. Br."), 1.
2 Final Office Action mailed June 5, 2014 ("Final Act.").
Appeal2015-002523
Application 12/359,662
1. A method for bonding nano-elements to a surface, said
method comprising:
applying layers of metal onto a top of a nano-element array
of a plurality of substantially aligned nano-elements, the layers
of metal including a substantially continuous layer of an inert
metal bonded to tips of the plurality of aligned nano-elements,
wherein at least a portion of said substantially continuous layer
infiltrates at least a portion of the nano-element array, and a first
layer of a first active metal applied onto the layer of the inert
metal;
positioning a layer of a second active metal adjacent to the
first layer of the first active metal;
placing a compressive force of less than about 6.1 psi
across the nano-elements, the metal layers, and a substrate
adjacent the second layer of a second active metal to facilitate
forming at least one of a eutectic bond, a metal solid solution,
and an alloy bond between the nano-elements and the substrate;
and
elevating the temperature of the nano-elements, the metal
layers, and the substrate such that the first and second active
metals form at least one of the eutectic bond, the metal solid
solution, and the alloy bond between the nano-elements and the
substrate.
App. Br. (Claims Appendix) 10.
DISCUSSION
Claims 1-12 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Zhang et al. (US 2004/0266065 Al, published Dec. 30, 2004)
(hereinafter "Zhang") in view of Stacey (US 5,021,300, issued Jun. 4, 1991)
(hereinafter "Stacey") and Ouellet et al. (US 2004/0067604 Al, published
Apr. 8, 2004) (hereinafter "Ouellet"), and further in view of Graham, Jr. et
al. (US 2009/0246507 Al, published Oct. 1, 2009) (hereinafter "Graham").
Final Act. 2---6.
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Appeal2015-002523
Application 12/359,662
Appellants argue the claims as a group. See generally App. Br. 3-8.
We select claim 1 as representative of the rejected claims, and the remaining
claims on appeal will stand or fall with claim 1. See 37 C.F.R. § 41.37
( c )(1 )(iv) (2015).
The Examiner finds that Zhang teaches a method for making a carbon
nanotube device that includes growing carbon nanotubes on a substrate 310
(Zhang i-f 24), and then depositing a layer of metal 330, which may comprise
copper (inert material) over the carbon nanotube array 320 and substrate 310
to form a metal matrix around the carbon nanotubes 325 (Id. i-f 25; Figs. 3A,
3B). Ans. 2-3. The Examiner also finds that Zhang teaches that the metal
layer 330 extends above the upper ends (tips) of the nanotubes 325
(Zhang i-f 30; Fig. 3B). See id. The Examiner finds that Zhang teaches a
solder metal layer 340 (first layer of a first active metal) may be deposited
over the layer of metal 330 (Zhang i-f 29; Fig. 3D). Final Act. 2. However,
the Examiner acknowledges that Zhang does not teach a layer of a second
active metal adjacent to the first layer of the first active metal or placing a
compressive force of less than about 6.1 psi across the nano-elements, the
metal layers, and substrate and elevating the temperature of the nano-
elements, the metal layers, and the substrate to form a eutectic bond between
the nano-elements and the substrate. Id.
The Examiner finds, and Appellants do not dispute, that Stacey
teaches a method for forming a solder bond for use in bonding electrical
components to substrates that includes depositing a first active metal layer
comprising copper or gold over a substantially continuous layer of an inert
metal, and depositing a second active metal layer comprising tin or cadmium
over the first active metal layer (Stacey 3:60-66), and heating the layers to
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Appeal2015-002523
Application 12/359,662
form a eutectic bond that firmly bonds the structure together (Id. at 4:50-66;
Abstract). Final Act. 2-3. The Examiner finds, and Appellants do not
dispute, that one of ordinary skill in the art would have been motivated,
based on Stacey, to use a solder back that includes two alloy component
layers as Zhang's solder layer to form a eutectic bond that firmly bonds the
layers of Zhang's carbon nanotube structure together even at elevated
temperatures. Id.
The Examiner finds that neither Zhang nor Stacey teach applying
pressure to the nano-elements, the metal layers, and the substrate to form a
eutectic bond. Id. at 3. The Examiner, however, finds, and Appellants do
not dispute, that Ouellet teaches a method for manufacturing an integrated
device (Ouellet i-f 3; 5) including a cadmium gold solder bond between two
wafers, and applying compressive force across the components and elevating
the temperature of the components such that the metal layers form a eutectic
bond (Id. at i-fi-1145, 149). Final Act. 3. The Examiner finds, and Appellants
do not dispute, that one of ordinary skill in the art would have been
motivated, based on Ouellet, to apply pressure to bond Zhang's nano-
elements and metal layers to form a strong eutectic bond, without voids,
between the layers. See id. at 3. The Examiner acknowledges that Ouellet
does not disclose the claimed range of pressure, but finds that Graham
teaches bonding carbon nanotubes to a silicon substrate with a combination
of gold, indium, and tin layers using a pressure of less than 30 psi (Graham i-f
37). Final Act. 3--4. The Examiner finds, and Appellants do not dispute,
that one of ordinary skill in the art would have been motivated, based on
Graham, to apply low pressure to Zhang's carbon nanotube structure
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Appeal2015-002523
Application 12/359,662
because one of ordinary skill in the art would appreciate that low pressure is
required to avoid crushing the carbon nanotube device. Id. at 4.
Appellants argue the Examiner reversibly erred in finding that Zhang
alone or in combination with Stacey, Ouellet, and Graham describes or
suggests applying layers of metal to a nano-element array, where the layers
of metal include a substantially continuous layer of an inert metal bonded to
the tips of the nano-elements, and where at least a portion of the
substantially continuous layer infiltrates at least a portion of the nano-
element array. App. Br. 7. Appellants' argument is not persuasive. Zhang
teaches growing carbon nanotubes on a substrate (Zhang i-f 24), and then
depositing a layer of metal 330, which may include an inert metal such as
copper, over the carbon nanotubes array 320 to form a metal matrix around
the carbon nanotubes 325 (Id. i-f 25). Accordingly, as shown in Zhang's
Figure 3B, the substantially continuous (inert) metal layer 330 in Zhang
infiltrates at least a portion of its nano-element array 320.
Appellants' argument that Zhang in view of Stacey only teaches
infiltration of metal into the nano-element array during rather than prior to
the heating and bonding process is also not persuasive. Claim 1 does not
require that the infiltration occurs prior to elevating the temperature of the
nano-elements, the metal layers, and the substrate. In addition, Appellants
bald assertion is not supported by Zhang's disclosure, which appears to
teach that infiltration of the nano-element with the continuous (inert) metal
layer 330 occurs prior to the heating and bonding process, which would
occur once Zhang's free-standing composite structure is attached to other
components such as a heat sink using solder. Zhang i-f 28; Fig. 2.
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Application 12/359,662
Appellants argue that because Graham teaches reducing adhesion of
carbon nanotubes to a growth surface using water/peroxide etching
(Graham i-f 27), one of ordinary skill in the art would not have been
motivated to combine the teachings of Graham and Zhang. App. Br. 7-8.
This argument is not persuasive. The skilled artisan would "be able to fit the
teachings of multiple patents together like pieces of a puzzle" since the
skilled artisan is "a person of ordinary creativity, not an automaton." KSR
Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 420-21 (2007). It is not necessary
that the references be physically combinable, without change, to render
obvious the invention under review. In re Sneed, 710 F.2d 1544, 1550 (Fed.
Cir. 1983). The criterion instead is what these references would have taught
or suggested to a person of ordinary skill in the field of the invention. In re
Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). On this record, Appellants do
not present persuasive arguments or evidence that one of ordinary skill in the
art would not have, through the use of no more than ordinary creativity,
modified the applied prior art so as to result in the claimed method.
DECISION
For the above reasons, the rejection of claims 1-12 is affirmed.
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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