Ex Parte Hyde et al

Patent Trials and Appeals Board

Feb 11, 2016

12229994 - (D) (P.T.A.B. Feb. 11, 2016)

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1 Claims 12-14 and 21-30 have been withdrawn from consideration, and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).
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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)
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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'
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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.").
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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.
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Appeal2013-008971
Application 12/229,994
lllSC
REVERSED
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