Ex Parte Lim et al

Patent Trial and Appeal Board

Feb 12, 2013

10613513 (P.T.A.B. Feb. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BRIAN Y. LIM,
THOMAS W. TOMBLER, JR., and JON W. LAI
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Appeal 2010-006533
Application 10/613,513
Technology Center 3700
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Before JAMES P. CALVE, SCOTT A. DANIELS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
1-18 and 29-55. App. Br. 2. Claims 19-28 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
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CLAIMED SUBJECT MATTER
Claims 1 and 29 are independent. Claim 1 is reproduced below:
1. An apparatus for fabricating nanostructure-based
devices on a workpiece comprising:
a stage for supporting the workpiece, wherein the work-
piece includes multiple dies, each die having a catalyst on it;
a radiating-energy source, positioned above the stage to
locally heat the catalyst on at least one die via simultaneously
emitted multiple prongs of radiating energy; and
a feedstock delivery system for delivery of feedstock gas
to the catalyst.

REJECTIONS1
Claims 8 and 9 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.
Claims 1-3, 6, 7, 9, 11-14, and 18 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable Colbert (US 6,756,026 B2; iss. Jun. 29,
2004) and Dai (WO 02/081366 A1; pub. Oct. 17, 2002).
Claims 4, 5, and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Colbert, Dai, and Glaser-Inbari (US 6,801,350 B2; iss.
Oct. 5, 2004).
Claims 15-17 and 29-46 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Colbert, Dai, and Hong (US 2002/0127170 A1; pub.
Sep. 12, 2002).
Claims 47-49 and 52-55 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Colbert, Dai, Hong, and Glaser-Inbari.

1 The Examiner withdrew the rejection of claims 1-18 and 29-55 under 35
U.S.C. § 101 for claiming the same invention as claims 1-36 of Application
10/613,217 because Application 10/613,217 was abandoned. Ans. 9.
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Claims 50 and 51 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Colbert, Dai, Hong, and Smalley (US 6,683,783 B1; iss.
Jan. 27, 2004).
ANALYSIS
Claims 8 and 9 as indefinite
Claim 8
The Examiner found that claim 8 is indefinite because it is not clear
how “a set of islands of catalyst” can be associated with one die. Ans. 3.
The Examiner reasoned that claim 1 recites that each die has catalyst on it
and having a catalyst cannot be a set of islands of catalyst. Ans. 8-9.
Appellants argue that a skilled artisan would understand that
semiconductor fabrication involves patterned regions (e.g., islands) and an
entire die or multiple dies can be patterned or a single die can have multiple
regions patterned with catalyst. App. Br. 4. We agree. Appellants disclose
that carbon nanotube structures are made by heating multiple catalyst loci
(e.g., catalyst islands) on the work region. Spec. 1-2, para. [0003]; Spec. 9-
10, para. [0023]. A skilled artisan would understand that catalyst islands are
locations of catalyst and catalyst can be arranged in one or more islands on a
die(s) of a workpiece. We cannot sustain the rejection of claim 8.
Claim 9
The Examiner found that claim 9 is indefinite because it is unclear
from the limitation “all catalyst throughout die” how the catalyst is present
on the die and whether the catalyst is on, in or near the dies or throughout
the entire body of the die. Ans. 3, 9. Appellants argue that a skilled artisan
would understand that an entire die can be patterned or multiple regions in a
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single die can be patterned, if so desired, to contain catalyst. App. Br. 4.
We agree. A skilled artisan would understand that catalyst on a die can be
placed anywhere on the die. We cannot sustain the rejection of claim 9.
Claims 1-3, 6, 7, 9, 11-14, and 18 as unpatentable over Colbert and Dai
The Examiner found that Colbert discloses a system for making
nanocomponents with a mounting element and carbon feedstock gas but
does not teach multiple radiating energy beams. Ans. 4. The Examiner
found that Dai discloses an apparatus for making carbon nanotubes with a
substrate, gaseous carbonaceous feedstock, and localized heating zones 8
having multiple prongs as shown in Figure 1B. Ans. 4-5. The Examiner
found that Dai’s feed gas prongs 9 form multiple prongs of radiating energy
through heat zone 8 to heat substrates in a radiating fashion. Ans. 9-10, 13.
Appellants argue that Dai heats blocks of substrates 1 by placing the
substrates 1 on a heating element 2, and the gas distributor 9 merely allows
carbon-containing material to be introduced into multiple localized heating
zones 8 created by the heating element 2. App. Br. 6-7. We agree. The
Examiner’s finding that Dai’s gas distributor 9 is a radiating-energy source
that emits multiple prongs of radiating energy to heat catalyst on a die is not
supported by a preponderance of evidence. Appellants disclose a radiating-
energy source 34 that emits multiple prongs of energy that is preferably a
laser, but may be other focusable radiating energy such as acoustic, radio
frequency, infrared, microwave, and the like. Spec. 7, para. [0019]. Dai’s
gas distributor 9 corresponds to the claimed feedstock delivery system that
delivers a gas to catalyst to the work region. Spec. 7, para. [0019]; Spec. 14,
para. [0032]. We cannot sustain the rejection of claim 1 or its dependent
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claims 2, 3, 6, 7, 9, 11-14, and 18. We also cannot sustain the rejection of
claims 4, 5, and 10 as being unpatentable over Colbert, Dai, and Glaser-
Inbari or the rejection of claims 15-17 as being unpatentable over Colbert,
Dai, and Hong, because the Examiner’s reliance on Glaser-Inbari to disclose
features of claims 4, 5, and 10 and Hong to disclose features of claims 15-17
does not remedy the deficiencies of Colbert and Dai discussed supra as to
claim 1 from which claims 4, 5, 10 and 15-17 depend.
Claims 29-46 as unpatentable over Colbert, Dai, and Hong
Claim 29 recites an apparatus with a stage, radiating energy source
that heats a catalyst via multiple prongs of radiating energy, a feedstock
delivery system, and a temperature control unit. The Examiner relied on
Hong to disclose a temperature controller 500 for nanotube fabrication and
Colbert and Dai to disclose the other features of claim 29, including the
radiating energy source. Ans. 6-7, 14. Appellants argue that claim 29
recites substantially similar limitations as claim 1, so arguments presented
for claim 1 apply to those limitations in claim 29. App. Br. 12. We agree.
We cannot sustain the rejection of claim 29 or its dependent claims 30-46
because Colbert and Dai do not disclose a radiating energy source that heats
catalyst via multiple prongs of radiating energy, for the reasons discussed
supra for claim 1, and Hong does not cure that deficiency. See App. Br. 12.
Claims 47-49 and 52-55 as unpatentable over Colbert, Dai, Hong, and
Glaser-Inbari and claims 50 and 51 as unpatentable over Colbert, Dai,
Hong, and Smalley
Claims 47-55 depend from claim 29. The Examiner relied on Glaser-
Inbari to disclose a beam splitter and Smalley to disclose an electric field
generator. Ans. 7-8, 15. Neither reference remedies the deficiencies of
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Colbert, Dai, and Hong as to claim 29. See App. Br. 14-15. We cannot
sustain the rejection of claims 47-55.
DECISION
We REVERSE the rejections of claims 1-18 and 29-55.

REVERSED

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