Ex Parte Hyde et alDownload PDFPatent Trial and Appeal BoardFeb 11, 201612229994 (P.T.A.B. Feb. 11, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/229,994 08/27/2008 96845 7590 02/16/2016 Advent, LLP 3930 South 147th Street Suite 101 Omaha, NE 68144 FIRST NAMED INVENTOR Roderick A. Hyde 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. 0505-026-00lB-DIVOOl 2095 EXAMINER CAZAN, LIVIUS RADU ART UNIT PAPER NUMBER 3729 NOTIFICATION DATE DELIVERY MODE 02/16/2016 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): sloma@adventip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RODERICK A. HYDE, MURIEL Y. ISHIKAWA, NATHAN P. MYHRVOLD, CLARENCE T. TEGREENE, CHARLES WHITMER, and LOWELL L. WOOD, JR. Appeal2013-008971 Application 12/229,994 Technology Center 3700 Before JENNIFER D. BAHR, JOHN C. KERINS, and MICHAEL L. WOODS, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Roderick A. Hyde et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1--4, 6-11, 15-20, and 31. 1 We have jurisdiction under 35 U.S.C. § 6(b ). An oral hearing in accordance with 37 C.F.R. § 41.47 was held on January 28, 2016. We REVERSE. 1 Claims 12-14 and 21-30 have been withdrawn from consideration, and claim 5 stands objected to as being dependent upon a rejected base claim. Final Act. 1 (Office Action Summary); id. at 6. Appeal2013-008971 Application 12/229,994 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A method of constructing a carbon nanotube (CNT) circuit, compnsmg: creating a junction in a template structure, the template structure including: a first array of substantially parallel CNTs; a second array of substantially parallel CNTs at an angle to the first array; and an intermediate layer interposed between a first selected CNT of the first array and a second selected CNT of the second array; wherein creating a junction comprises coupling the first selected CNT and the second selected CNT. REJECTIONS I. Claims 1, 2, 15, 17-19, and 31 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Lieber (US 2002/0130353 Al, published Sept. 19, 2002). II. Claims 3, 16, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lieber. III. Claims 4 and 6-11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lieber, Johnson (US 6,897 ,009 B2, issued May 24, 2005), and Dill (US 3,700,976, issued Oct. 24, 1972). 2 Appeal2013-008971 Application 12/229,994 DISCUSSION Rejection I The Examiner finds that Lieber discloses all of the limitations of claim 1. Ans. 2. In particular, the Examiner finds that the middle support labeled "21 O" in Figure 8 of Lieber is an intermediate layer interposed between a first selected CNT (wire 201) of the first array (wires 201, 202) and a second selected CNT (wire 204) of the second array (wires 203, 204). Id. Appellants argue that "[t]he Examiner failed to establish where the Examiner-cited portions of Lieber disclose an equivalent to the recitation of claim 1 of 'an intermediate layer interposed between a first selected CNT of the first array and a second selected CNT of the second array.'" Appeal Br. 13. According to Appellants, Lieber' s Figure 8 "illustrates the supports 210 on either side of wire 204 on the substrate 214, as described in paragraph [55], and not interposed between wires 201 and 204." Id. at 14. Appellants contend that "the Examiner failed to establish evidence of how one of ordinary skill in the art would interpret support 210 being 'interposed between' wire 201 and wire 204." Id. When claim terminology is construed in the United States Patent and Trademark Office, claims are to be given their broadest reasonable interpretation consistent with the specification, reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Moreover, "the context of the surrounding words of the claim also must be considered in determining the ordinary and customary meaning of those terms." Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) 3 Appeal2013-008971 Application 12/229,994 (en bane) (citing ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003)). Appellants argue, and we agree, that one of ordinary skill in the art would not consider middle support 210 as an "intermediate layer" relative to wires 201 and 204, much less an intermediate layer "interposed between" wires 201 and 204. Appeal Br. 15, 16. As illustrated in Figure 8 of Lieber, middle support 210 lies underneath wire 201, between wire 201 and substrate 214, and to the left of wire 204. One could certainly trace a line showing a path from a point on wire 201 to a point on wire 204 that passes through middle support 210. Further, middle support 210 extends into a volume bounded on two sides by wires 201 and 204, and, in that sense, can fairly be described as extending between wires 201 and 204. However, to conclude from those facts that a person having ordinary skill in the art would reasonably consider middle support 210 to be "an intermediate layer interposed between" wires 201 and 204 fails to properly consider the full context of that claim limitation in light of the underlying description in the Specification and drawings of the present application, as explained below. Appellants' Specification discloses that "intermediate layer 14 ... may be a coating on the CNTs or have any other physical configuration that interposes it between CNTs of the two arrays" and that "[i]n the configuration shown in FIG. 1, the CNTs of the first array 10 are insulated from the CNTs of the second array 12 by the intermediate layer." Spec. i-f 16. Further, the Specification states that "intermediate layer 14 may comprise any material that serves to separate the CNTs and that can be selectively removed or deactivated." Id. i-f 18. Figure 1 of the present application depicts a schematic of the template device of Appellants' 4 Appeal2013-008971 Application 12/229,994 invention comprising a layered arrangement of first CNT array 12 as the first layer, intermediate layer 14 as the second layer, and second CNT array 10 as the third layer. See Spec. i-f 9. Until Appellants' template device is selectively edited by removing a portion of intermediate layer 14 to form a junction between first and second CNTs, as illustrated in Figure 2, intermediate layer 14 is interposed between the first and second CNTs so as to form a barrier between them. Thus, when construing the recitation of "an intermediate layer interposed between a first selected CNT of the first array and a second selected CNT of the second array" in claim 1, in its full context and in light of the Specification, a person of ordinary skill in the art would interpret the recited "intermediate layer" as being an intermediate layer relative to the first selected CNT and the second selected CNT between which it is interposed. Further, consistent with Appellants' Specification, one of ordinary skill in the art would understand the phrase "interposed between" in the sense of placed between as a separator, barrier or obstacle. 2 Lieber' s middle support 210 lies underneath wire 201, forming an intermediate layer between wire 201 and substrate 214, and to the left of wire 204. As such, middle support 210 does not form a barrier or obstacle between wire 204 and 201. See Lieber, Fig. 8 (depicting junction 207 between wire 201 and wire 204 ). Considering the limitation in question as a whole, in the context of the Specification, a person of ordinary skill in the art would not consider 2 See, e.g., interpose. (2016) Dictionary.com Unabridged. Retrieved from http://dictionary.reference.com/browse/interpose ("1. To place between; cause to intervene ... 2. To put (a barrier, obstacle, etc.) between or in the way of."). 5 Appeal2013-008971 Application 12/229,994 Lieber' s middle support 210 to be an intermediate layer interposed between wire 201 and wire 204. The Examiner offers "another perspective," taking into account Lieber' s disclosure of an array "formed with at least 500 parallel wires in each direction, with each wire containing at least 500 crossbar array junctions." Ans. 8-9; Lieber i-f 83. The Examiner provides a "further view" in which wires 202 and 204 are considered the first and second CNTs, respectively, and the middle support in the rear row, as seen in Figure 8 of Lieber, is considered the "intermediate layer." Ans. 9. However, the arrangements relied upon in these additional perspectives fail to satisfy the limitation in question for the reasons discussed above, and, thus, cannot salvage the rejection. For the above reasons, we do not sustain the rejection of claims 1, 2, 15, 17-19, and 31under35 U.S.C. § 102(b) as being anticipated by Lieber. Rejections II and III The additional findings and reasoning articulated by the Examiner in these rejections do not remedy the aforementioned deficiency in the rejection of claim 1. See Ans. 4--6. Thus, we also do not sustain the rejection of claims 3, 16, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Lieber or the rejection of claims 4 and 6-11 under 35 U.S.C. § 103(a) as being unpatentable over Lieber, Johnson, and Dill. DECISION The Examiner's decision rejecting claims 1--4, 6-11, 15-20, and 31 is REVERSED. 6 Appeal2013-008971 Application 12/229,994 lllSC REVERSED 7 Copy with citationCopy as parenthetical citation