Ex Parte Harutyunyan et al

Patent Trial and Appeal Board

Aug 11, 2016

11222892 (P.T.A.B. Aug. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111222,892 09/08/2005
139525 7590 08/15/2016
Arent Fox LLP and Honda Patent & Technologies
North America, LLC
1717 K Street. NW
Washington, DC 20006-5344
Avetik Harutyunyan
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. CONFIRMATION NO.
037110.00505 8962
EXAMINER
HENDRICKSON, STUART L
ART UNIT PAPER NUMBER
1736
NOTIFICATION DATE DELIVERY MODE
08/15/2016 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):
patentdocket@arentfox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte A VETIK HARUTYUNY AN,
ELENA MORA FERNANDEZ,
and TOSHIO TOKUNE
Appeal2014-008623
Application 11/222,892
Technology Center 1700
Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and
JEFFREY T. SMITH, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner's
decision finally rejecting claims 1, 2, 4, 5, 10-15, 17-19, and 59---62. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Representative claim 1 is reproduced below from the Claims Appendix of
the Appeal Brief dated March 14, 2014 ("App. Br.").
1. A chemical vapor deposition method for the preparation of
single-wall carbon nanotubes (SWNT), the method comprising:
Appeal2014-008623
Application 11/222,892
[ 1] providing a catalyst on a support wherein the catalyst comprises
a metal;
[2] determining a particle size for at least one of the catalyst on a
support;
[3] determining a eutectic temperature wherein a metal-carbon
phase of the catalyst is liquefied by carbon-induced liquefaction based
on the particle size and an identity of the metal;
[ 4] contacting the catalyst with a carbon precursor gas at a
temperature that is 5 degrees Celsius to 150 degrees Celsius above the
eutectic temperature wherein the carbon precursor gas comprises an
inert gas,
[5] producing single-walled carbon nanotubes having diameters
within 25% of a mean SWNT diameter.
App. Br. 11 (numbering added).
The claims on appeal stand rejected as follows:
(1) claims 1, 2, 4, 5, 10-15, 17-19, and 59---62 under 35 U.S.C. § 112,
first paragraph, based on the written description requirement;
(2) claims 1, 2, 4, 5, 10-15, 17-19, and 59---62 under 35 U.S.C. § 112,
second paragraph, as being indefinite;
(3) claims 1, 2, 4, 5, 10-15, 17-19, and 59---62 under 35 U.S.C. § 103(a)
as unpatentable over Harutyunyan et al. 1 in view of Li et al.,2 optionally further in
view of Ishida et al.; 3
1 Avetik R. Harutyunyan et al., CVD Synthesis of Single Wall Carbon Nanotubes
under "Soft" Conditions, 2 Nano Letters 525-30 (2002) ("Harutyunyan").
2 Yiming Li et al., Growth of Single-Walled Carbon Nanotubes from Discrete
Catalytic Nanoparticles of Various Sizes, 105 J. Phys. Chem. 11424--31 (2001)
("Li").
3 US 2007/0041886 Al, published February 22, 2007 ("Ishida").
2
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Application 11/222,892
(4) claims 1, 2, 4, 5, 10-15, 17-19, and 59---62 under 35 U.S.C. § 103(a)
as unpatentable over Resasco et al. 4 in view of Li, optionally further in view of
Ishida;
(5) claims 1, 2, 4, 5, 10-15, 17-19, and 59---62 under 35 U.S.C. § 102(b)
as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Li
in view of Harutyunyan and further in view of Ishida;
(6) claims 1, 2, 4, 5, 10-15, 17-19, and 59---62 under 35 U.S.C. § 103(a)
as unpatentable over each of rejections (3), (4), and (5), and further in view of
Appellants' admissions;5
(7) claims 1, 2, 4, 5, 10-15, 17-19, and 59---62 on the ground of
nonstatutory obviousness-type double patenting as unpatentable over claims 1-15
of US 8, 163 ,263 to Harutyunyan et al. ("Harutyunyan 263 ") in view of Li; and
(8) claims 1, 2, 4, 5, 10-15, 17-19, and 59---62 on the ground of
nonstatutory obviousness-type double patenting as unpatentable over claims 1-33
of US 7,871,591 to Harutyunyan et al. ("Harutyunyan 591").
B. DISCUSSION
1. Rejections (7) and (8)
In the obviousness-type double patenting rejections on appeal, the Examiner
concludes that claims 1, 2, 4, 5, 10-15, 17-19, and 59---62 are unpatentable based
on Harutyunyan 591 alone or Harutyunyan 263 in view of Li. The Appellants do
not contend that the Examiner's rejections are erroneous. Therefore, we
summarily affirm the obviousness-type double patenting rejections of claims 1, 2,
4, 5, 10-15, 17-19, and 59---62 on appeal.
4 US 6,413,487 Bl, issued July 2, 2002 ("Resasco").
5 Paragraphs 60 and 61 of the Appellants' Specification.
3
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Application 11/222,892
2. Rejections (1) and (2)
Claim 1 recites the step of "determining a eutectic temperature wherein a
metal-carbon phase of the catalyst is liquefied by carbon-induced liquefaction
based on the particle size and an identity of the metal." App. Br. 11 (emphasis
added).
The Examiner concludes that claim 1 is indefinite because "'a' metal-carbon
phase and 'a' [eutectic] temperature should be 'the."' Final 2; 6 Ans. 2.7 According
to the Examiner:
The use of 'a' implies that there is more than one such
temperature or phase. However, a given composition has only one
eutectic temperature. It is not necessary for the first occurrence of a
term to be preceded by 'a' - especially when 'the' is the correct usage;
given that it is argued that the eutectic point is a specific temperature
which is patentable, it should be so specified.
Ans. 5.
Similarly, the Examiner finds the claims on appeal are not supported by the
original disclosure because "[t]here is no exemplification for the new limitation of
'a' eutectic temperature and 'a' metal-carbon phase; they should be 'the' as was
previously recited." Final 2; Ans. 2.
In the Appeal Brief, the Appellants do not contest or otherwise address the
rejections under§ 112.8 See App. Br. 3-10. Therefore, we summarily affirm the
6 Final Office Action dated November 18, 2013.
7 Examiner's Answer dated June 5, 2014.
8 In the Reply Brief, the Appellants address the § 112 rejections for the first time
on appeal. Reply Brief dated August 5, 2014 ("Reply Br."), at 2. We recognize
that the Examiner elaborates on the§ 112 rejections in the Examiner's Answer.
See Ans. 5. Nonetheless, we find the Appellants' failure to address the § 112
rejections in the Appeal Brief constitutes a waiver of any argument against those
rejections on appeal. Cf 37 C.F.R. § 41.37 (c)(iv) (2014) (discussing waiver of
4
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Application 11/222,892
rejections of claims 1, 2, 4, 5, 10-15, 17-19, and 59---62 based on the first and
second paragraphs of§ 112.
3. Rejection (5)
The Appellants argue that the combination of Harutyunyan and Li does not
disclose all of the elements recited in claim 1. App. Br. 5. More specifically, the
Appellants argue that Harutyunyan does not disclose "selecting a temperature at
which to contact the catalyst with a carbon precursor gas based on the eutectic
temperature of the catalyst metal with carbon." App. Br. 6. The Appellants also
argue that Li does not mention a eutectic point but rather "discloses that there is
'carbon-iron solid-state solution' during chemical vapor deposition." App. Br. 6
(citing Li 11429, col. 2). Thus, according to the Appellants, "[t]here is nothing in
Li to suggest determining the temperature for contacting a catalyst with a carbon
precursor gas based on the eutectic temperature as opposed to any other
temperature at which there is a carbon-iron liquid phase." App. Br. 6-7.
Claim 1 recites, inter alia, the steps of:
[2] determining a particle size for at least one of the catalyst on a
support;
[3] determining a eutectic temperature wherein a metal-carbon
phase of the catalyst is liquefied by carbon-induced liquefaction based
on the particle size and an identity of the metal; [and]
[ 4] contacting the catalyst with a carbon precursor gas at a
temperature that is 5 degrees Celsius to 150 degrees Celsius above the
eutectic temperature wherein the carbon precursor gas comprises an
inert gas[.]
App. Br. 11 (numbering added).
argument). For that reason, the Appellants' arguments in the Reply Brief directed
to the§ 112 rejections on appeal have not been considered.
5
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As for step [2], the Examiner finds "Li discusses the desirability of
controlling nanotube size by controlling the catalyst size." Ans. 5; see also App.
Br. 6 ("Li discloses a method of controlling the size of synthesized nanotubes by
controlling the size of the catalyst nanoparticle used to grow the nanotube. "); Li
11430, col. 2 (disclosing that "the diameters of SWNTs can be controlled by tuning
the size of catalytic nanoparticles"). Thus, Li teaches that catalyst size is a result-
effective variable. See In re Antonie, 559 F .2d 618, 620 (CCP A 1977) ("the
discovery of an optimum value of a variable in a known process is normally
obvious").
As for step [3], the Examiner finds the prior art of record does not teach the
mental step of determining a eutectic temperature based on catalyst particle size.
Ans. 4; see also Ans. 5 (finding that determining the eutectic temperature "requires
only looking up the data on a table and not any actual experimental step").
Nonetheless, the Examiner finds the relationship between particle size and eutectic
point is known in the art. Ans. 4. Indeed, the Appellants disclose that "the eutectic
point can be calculated using art known equations." Spec. i-f 60.
As for step [4] (i.e., "contacting the catalyst with a carbon precursor gas at a
temperature that is 5 degrees Celsius to 150 degrees Celsius above the eutectic
temperature"), the Examiner relies on both Li and Harutyunyan.
The Examiner directs our attention to the following disclosure in Li (Ans. 3):
At the early stage of the CVD reaction, carbon atoms
catalytically decomposed from methane are absorbed into the
nanoparticle anchored on the support substrate, forming a carbon-iron
solid-state solution in the particle. Once a super-saturation point is
reached, carbon precipitates out from the particle surface. If carbon
supply to the nanoparticle continues, continued carbon precipitation
occurs and leads to the growth of a single-walled nanotube ....
Li 11429, col. 2 (emphasis added).
6
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The Appellants argue that "[a] solid-state solution is a solid and not liquid as
occurs at a temperature above the eutectic point so there is no suggestion of using a
eutectic point for anything by Li's disclosure of a solid-state solution." Reply Br.
3.
The Appellants' argument is not persuasive of reversible error. Ishida,
which describes a different method for generating SWNTs than the claimed
method,9 is relevant in understanding the meaning of the phrase "carbon-iron solid-
state solution" in the context of Li's disclosure. Ishida discloses that the
"preparation temperature [of a carbon nanotube] is with[ in] the range of
approximately 100°C. from the temperature of the catalyst fine particle becoming
liquid by forming solid solution with carbon." Ishida i-f 40 (emphasis added).
Thus, we find one of ordinary skill in the art would have understood that the iron
catalyst in Li's "carbon-iron solid-state solution" is liquid.
The Appellants argue that "[a] liquid phase of carbon and iron can form at
many temperatures, not just the eutectic point." App. Br. 6. We recognize that Li
does not expressly disclose that the catalyst (Fe302 on Si02) is contacted with a
carbon precursor gas at "5 degrees Celsius to 150 degrees Celsius above the
eutectic temperature" as recited in claim 1. See App. Br. 11. Nonetheless, we find
one of ordinary skill in the art would have understood that Li's catalyst, forming
the disclosed carbon-iron solid-state solution, is contacted with a carbon precursor
gas above the eutectic temperature of the catalyst. Thus, at the very least, the
claimed "contacting" step is rendered obvious by Li. Cf In re Peterson, 315 F .3d
9 See App. Br. 7 ("Ishida discloses a method of generating nanotubes from
amorphous carbon. . . . [T]he method of Ishida is different from that of the
claimed method").
7
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Application 11/222,892
1325, 1329 (Fed. Cir. 2003) ("even a slight overlap in range establishes a prima
facie case of obviousness"). 10
Moreover, the Examiner finds, and the Appellants do not dispute, that
Harutyunyan uses chemical vapor deposition to form single wall carbon nanotubes
using the same catalyst (i.e., Fe/ Al in methane) at the same temperature (i.e.,
800°C) as disclosed in the Appellants' Specification. Ans. 5; see also Spec. i-f 68
(Example 2). Thus, the Examiner finds Harutyunyan necessarily performs claimed
"contacting" step [ 4].
For the reasons set forth above and reasons set forth in the Examiner's
Answer, the§ 103(a) rejection of claims 1, 2, 4, 5, 10-15, 17-19, and 59---62 based
on Li in view of Harutyunyan, further in view of Ishida is sustained.
The Examiner also rejects claims 1, 2, 4, 5, 10-15, 17-19, and 59---62 under
§ 102(b) as anticipated by Li. "To anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either explicitly or inherently."
In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). As discussed above, Li
does not expressly disclose the step of "contacting the catalyst with a carbon
precursor gas at a temperature that is 5 degrees Celsius to 150 degrees Celsius
above the eutectic temperature" as recited in claim 1. Moreover, the Examiner has
not provided a sufficient factual basis to support a finding of inherency. Therefore,
the§ 102(b) rejection of claims 1, 2, 4, 5, 10-15, 17-19, and 59---62 is not
sustained.
4. Rejections (3), (4), and (6)
Rejection (3), like rejection (4), is based on the combination of Harutyunyan
and Li, optionally in view of Ishida. Thus, for the reasons set forth above
10 The Appellants do not direct us to any evidence of unexpected results.
8
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sustaining the§ 103(a) rejection of claims 1, 2, 4, 5, 10-15, 17-19, and 59---62
based on Li in view of Harutyunyan and further in view of Ishida, rejection (3) is
also sustained.
As for rejection (4), we find the teachings in Resasco are cumulative of the
teachings in Harutyunyan. Therefore, the§ 103(a) rejection of claims 1, 2, 4, 5,
10-15, 17-19, and 59---62 based on Resasco in view of Li, further in view of Ishida
is sustained for the reasons set forth above.
Finally, rejection (6) is based on rejections (3), (4), and (5), further in view
of paragraphs 60 and 61 of the Appellants' Specification. 11 Rejection (6) is also
sustained for the reasons set forth above.
C. DECISION
The Examiner's decision 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)(l).
AFFIRMED
11 Paragraph 60 of the Appellants' Specification discloses that "the eutectic point
can be calculated using art known equations." Spec. 23. Paragraph 61 of the
Appellants' Specification discloses that "[a] commonly accepted mechanism for
carbon filament growth provides for the diffusion of carbon through the metal
particles." Spec. 24.
9