Ex Parte Lu et al

Board of Patent Appeals and Interferences

Sep 5, 2007

10946753 (B.P.A.I. Sep. 5, 2007)

The opinion in support of the decision being entered
today is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JENNIFER LU, NICOLAS J. MOLL,
and THOMAS E. KOPLEY
____________

Appeal 2007-1893
Application 10/946,753
Technology Center 2800
____________

Decided: September 5, 2007
____________

Before JEAN R. HOMERE, JAY P. LUCAS, and JOHN A. JEFFERY,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1, 3-16, 25-37, and 39-43. We have jurisdiction under 35
U.S.C. § 6(b). We affirm-in-part. Also, we enter new grounds of rejection
under 37 C.F.R. § 41.50(b) for claims 7 and 30-32.
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Application 10/946,753

STATEMENT OF THE CASE
Appellants invented a method for controlling the growth of carbon
nanotubes.1 Specifically, topological structures are provided on the
substrate which mechanically control the length and/or orientation of
nanotubes via physical contact between the nanotubes and the topological
structures.2 Claim 1 is illustrative:
1. A method comprising:

patterning a surface of a substrate to form a topological structure; and

growing nanostructures along the surface, wherein the topological
structure controls at least one of the length and orientation of the
nanostructures growing along the surface in at least one region of the
substrate.

The Examiner relies on the following prior art references to show
unpatentability:
Shin US 2002/0014667 A1 Feb. 7, 2002
Zhang, Y., et al., Electric-Field-Directed Growth of Aligned Single-Walled
Carbon Nanotubes, App. Phys. Ltrs., Vol. 79, No. 19, Am. Inst. of Phys.,
Nov. 5, 2001 (“Zhang”).

1. Claims 1, 3-6, 9-16, 25-37, and 39-43 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Shin.3
2. Claims 1 and 5-8 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Zhang.

1 Carbon nanotubes are elongated tubular bodies which are typically only a
few atoms in circumference (Specification ¶ 0001).
2 See generally Specification ¶¶ 0005-0008 and all Figures.
3 Although the Examiner includes claim 2 in this rejection (Answer 3), claim
2 has been cancelled. See Br. 2.
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Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Briefs and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. Arguments which Appellants could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

OPINION
I. The Anticipation Rejection Based on Shin
We first consider the Examiner’s rejection of claims 1, 3-6, 9-16, 25-
37, and 39-43 under 35 U.S.C. § 102(b) as being anticipated by Shin.
Anticipation is established only when a single prior art reference discloses,
expressly or under the principles of inherency, each and every element of a
claimed invention as well as disclosing structure which is capable of
performing the recited functional limitations. RCA Corp. v. Applied Digital
Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.
1984); W.L. Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
1554, 220 USPQ 303, 313 (Fed. Cir. 1983).

Claims 1, 5, 6, 15, and 16
The Examiner has indicated how the claimed invention is deemed to
be fully met by Shin (Answer 3-12). Regarding representative claim 1,4
Appellants argue that Shin’s aperture 16 does not control the length or

4 Appellants argue claims 1, 5, 6, 15, and 16 together as a group. See Br. 7
and 11. Accordingly, we select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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orientation of nanostructure 20. First, Appellants contend that Shin is
“misleading” in that it assumes that nanotubes grow straight and in a desired
direction, yet the reference fails to explain how to achieve such growth.
According to Appellants, carbon nanotubes generally do not grow in a
predetermined direction or in a straight line, but rather in a random direction
and often curve during growth (Br. 8-10; Reply Br. 3-4).
Second, Appellants contend that even if other factors (e.g., electric or
magnetic fields) are present in Shin to influence the direction of nanotube
growth, the aperture 16 (i.e., the “topological structure”) would not control
the orientation of the nanotubes. In fact, Appellant argues, without some
other force present, the nanotubes may grow in any orientation within the
aperture (Br. 10; Reply Br. 5).
Appellants also argue that not only does Shin’s aperture 16 fail to
control the nanostructures’ orientation, the aperture likewise fails to control
the nanostructures’ length as claimed. In this regard, Appellants emphasize
that a nanostructure’s length can vary greatly depending on the direction at
which it grows in the aperture (Id.). Appellants add that the length of a
nanotube is also dependent on its growth rate. Therefore, Appellants
contend, if one of the two nanotubes that meet each other within aperture 16
grew faster than the other nanotube, the faster-growing nanotube would be
longer (Br. 10; Reply Br. 6).
Appellants further contend that Shin is not enabling for the elements
in claim 1. According to Appellants, absent some “directed growth”
mechanism, Shin’s oriented growth ostensibly cannot be produced without
undue experimentation (Br. 11).
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The Examiner notes that Shin’s topological structures control
orientation. In this regard, the Examiner indicates that nanotubes in Shin
only grow from exposed catalyst structures. As such, these nanotubes will
grow in specific patterns depending on the specific orientation and
placement of the catalysts and the topological structures. The Examiner
adds that Shin only grows horizontal nanotubes and therefore prevents
vertical growth (Answer 14). The Examiner further indicates that
topological structure also controls the length of the nanotubes since they can
only be as long as the aperture’s opening. Id.
We will sustain the Examiner’s rejection of representative claim 1. At
the outset, we address Appellants’ contention regarding the alleged lack of
enablement of the Shin reference.
We recognize that a claimed invention cannot be anticipated by a
prior art reference if the allegedly anticipatory reference is not enabled.
Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1354, 65
USPQ2d 1385, 1416 (Fed. Cir. 2003). But we presume that the relevant
disclosures of a prior art reference are enabled. Id. at 1355, 65 USPQ2d at
1416.5 Accordingly, the burden then shifts to Appellants to prove otherwise
by a preponderance of the evidence. Id.
On this record, Appellants have hardly met their burden of rebutting
the presumption of enablement of the Shin reference. It is well settled that
determining the level of experimentation that would be “undue” so as to
render a disclosure non-enabling is made from the viewpoint of artisans
experienced in the field of invention. Elan Pharmaceuticals, Inc. v. Mayo
Found. for Med. Educ. & Res., 346 F.3d 1051, 1055 (Fed. Cir. 2003). In

5 See also MPEP § 2121.
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this determination, we apply a standard of reasonableness, with due regard
for the nature of the invention and the state of the art. Id. (internal citations
and quotation marks omitted).
Even assuming, without deciding, that it would be impossible to
control the orientation of the respective nanotubes that are disposed on
opposite sides of the aperture such that they meet within the aperture absent
some directed growth mechanism as Appellants suggest, we conclude that
using such directed growth mechanisms (e.g., electric or magnetic fields,
etc.) to ensure this alignment would hardly require undue experimentation.
In short, the fact that such “directed growth” techniques exist and are
well known in the art -- a fact that Appellants readily admit6 -- is itself
dispositive. Although Shin does not expressly disclose the technique used to
achieve the straight nanotube growth within the aperture,7 the skilled artisan
would have reasonably recognized that known techniques could be utilized
in Shin to achieve such directed growth.
Significantly, Appellants have not disputed that these well-known
techniques would not be at least capable of achieving such directed growth
(i.e., in a substantially straight line). Rather, Appellants’ argument is
premised on Shin’s failure to disclose any such technique. Such an
argument, however, hardly persuasively rebuts Shin’s presumption of

6 See Br., at 10 (“[C]ertain techniques have been proposed in the art for
influencing the direction of nanotube growth, such as the application of
electric or magnetic fields….”); see also Br., at 9-10 and Ev. App. (citing
articles to illustrate recognition of “the random growth of nanotubes absent
some mechanism for influencing the directionality of their growth”)
(emphasis added).
7 See, e.g., Shin, Figs. 6A-7D.
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enablement – a presumption based on the state of the art and the nature of
the invention.
Since the skilled artisan, in our view, would have reasonably
employed conventional techniques to direct the nanotube growth in Shin, we
need not address the question of whether, absent such known techniques,
Shin’s directed growth would be possible without experimentation, let alone
undue experimentation.
Turning now to the merits of the rejection, we find that Shin amply
discloses the limitations of representative claim 1. At the outset, we note
that claim merely calls for the topological structure to control at least one of
the length and orientation of the nanostructures. That is, the claim does not
require both length and orientation to be controlled, but rather just one such
characteristic. In any event, we find the topological structure in Shin
reasonably discloses controlling both length and orientation.
First, we agree with the Examiner that the sidewall of aperture 16 in
Shin reasonably constitutes a “topological structure” – an interpretation that
is indeed undisputed.8 Also, given the scope and breadth of the term
“orientation,” we find that the topological structure, at least in part, controls
the orientation of the grown nanostructures.9

8 See, e.g., Br. at 10 (arguing that “the topological structure (e.g., aperture
16) of Shin fails to control the orientation of the nanotubes”) (emphasis
added).
9 We further note that Appellants apparently recognize that the nanotube
orientations are controlled in Shin. See, e.g., Reply Br., at 7 (“[E]ven
assuming that the nanotube orientations are sufficiently controlled so as to
meet each other as illustrated by Shin….”).
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“Orientation” is defined, in pertinent part, as “a relative position.”10
As shown in Figs. 5A-7D, not only does the structure of the aperture itself
influence, at least in part, the relative positions of the nanostructures, the
disposition of the catalyst with respect to the aperture also has such an
influence. Furthermore, the vertical growth preventing layer in conjunction
with the aperture and catalyst likewise influences growth in the horizontal
direction – a direction that fully meets a “relative position” or orientation. In
sum, the aperture 16 and its associated structure is a substantial factor in
influencing the relative positions, or orientations, of the nanostructures. The
aperture therefore controls, at least in part, the orientation of the
nanostructures as claimed. For this reason alone, claim 1 is fully met by
Shin.
Shin also fully meets claim 1 for an additional reason: the aperture
not only controls the orientation of the nanostructures, but also their
length—at least in part. As the Examiner indicates, the nanostructures’
length is dictated primarily by the size of the aperture.11 In this regard,
Figures 6A-7D clearly show that the nanostructures span the entire extent of
the aperture (i.e., the diameter of a circular aperture as shown in Figs. 6A-7C
or the width of a polygonal aperture in Fig. 7D).
Even if we assume, without deciding, that one nanotube could
somehow grow faster than the other as Appellants argue (and therefore meet
at a point not precisely at the center of the aperture), the limitation regarding

10 The Compact Oxford English Dictionary of Current English, available at
http://www.askoxford.com/concise_oed/orientation?view=uk (last visited
Aug. 23, 2007).
11 See Answer, at 14 (“[T]he nanotubes can only be as long as the opening
will allow.”).
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the topological structure’s ability to control the nanostructures’ length would
still be fully met. The claim language simply does not preclude controlling
the length of the united nanostructures (i.e., the resulting union of
oppositely-extending nanostructures that meet within the aperture). That is,
even if one nanostructure is longer than the other, the length of the united
nanostructures is nonetheless dictated by the size of the aperture as shown in
Figures 6A-7D. Therefore, Shin fully meets claim 1 for this additional
reason.
For at least these reasons, we will sustain the Examiner’s anticipation
rejection of representative claim 1. Likewise, we will sustain the
Examiner’s rejection of claims 5, 6, 15, and 16 which fall with claim 1.

Claims 3 and 4
We will also sustain the Examiner’s rejection of representative claim
3. Even if we assume, without deciding, that the individual nanotubes that
comprise a united nanotube do not extend the entire distance across the
aperture, the claim does not preclude the length of the united nanostructures
is nonetheless dictated by the size of the aperture as noted above.
Furthermore, at least the exposed catalyst surface from which the nanotubes
originate physically contacts the aperture sidewall – an aperture structure
which likewise influences, at least in part, the orientation of the nanotubes as
indicated previously.
Since claim 3 is fully met by Shin, we will therefore sustain the
Examiner’s rejection of that claim and claim 4 which falls with claim 3.

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Claim 9
We will also sustain the Examiner’s rejection of claim 9. As shown in
Fig. 3D and described in ¶ 0051, Shin forms a number of apertures
(topological structures) in the substrate – a formation process that fully
meets “patterning” the substrate’s surface giving the term “patterning” its
broadest reasonable interpretation. Although Appellants argue that layer 14
appears to be deposited on substrate 10 rather than patterned (Br. 13; Reply
Br. 8), nothing in the claim precludes “patterning” the substrate’s surface by
forming apertures therein.
In addition, we find nothing in the claim that precludes the
Examiner’s interpretation of multiple topological structures such as those
shown in Fig. 5B comprising (1) the vertical sidewalls of an aperture, and
(2) the “bottom” substrate layer 10. These distinct structures, at least
generally, define a “growth path” for the nanostructures (i.e., at least the
aperture sidewalls, the area between the aperture sidewalls, and above the
bottom substrate layer). For this reason alone, Shin anticipates claim 9.
Furthermore, claim 9 is anticipated under an alternative interpretation
of Shin. Since each of Shin’s multiple apertures can be considered a
“topological structure,” two such apertures each define a “grow path” at
least within each respective aperture. In short, the claim does not preclude
independent and distinct grow paths within two respective apertures. Claim
9 is therefore fully met by Shin for this additional reason. The Examiner’s
rejection is therefore sustained.
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Claim 10
We will also sustain the Examiner’s rejection of claim 10. As we
indicated previously, the aperture structure, including the sidewalls, forms
part of the growth path that influences, at least in part, the orientation of the
nanotubes. We add that, contrary to Appellants’ argument (Reply Br. 9),
defining the location of the exposed catalyst likewise influences, at least in
part, the relative position of the resulting nanostructures and therefore their
orientation. The claim is fully met by Shin and the Examiner’s rejection is
therefore sustained.

Claim 11
Claim 11 is also fully met by Shin. Nothing in the claim precludes the
“multiple group paths” to be defined by different apertures respectively.
That is, a first group path would be defined in an aperture in a first substrate
region, and a second group path would be defined in another aperture in a
second substrate region. Moreover, the claim does not preclude the multiple
diverse arrays of nanostructures which extend in multiple directions as
shown in Figures 7A-9. Even if each aperture contained nanostructures
extending only in two directions (e.g., Fig. 7A, 7B, etc.), the respective
group paths would extend in different directions as claimed. The claim is
fully met and the rejection therefore sustained.

Claims 12-14, 25-29, 39, and 40
We will also sustain the Examiner’s rejection of claims 12-14, 25-29,
39, and 40. Our previous discussion regarding the topological structure in
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Shin reasonably disclosing controlling both length and orientation applies
equally here and we incorporate that discussion by reference.12 Claims 12
and 39 are fully met for those reasons alone.
Regarding claim 14, we add that the multiple growth paths illustrated
in Figures 7A-9 in Shin are certainly oriented relative to each other (e.g.,
parallel, perpendicular, etc.). For the foregoing reasons, claim 14 is fully
met.
Regarding claims 25-29 and 40, we reiterate that at least the exposed
catalyst surface from which the nanotubes originate in Shin physically
contacts the aperture sidewalls – an aperture structure which likewise
influences, at least in part, the orientation of the nanotubes as indicated
previously.
Furthermore, the nanostructures’ length is dictated primarily by the
size of the aperture as shown in Figures 6A-7D (illustrating that the
nanostructures span the entire extent of the aperture (i.e., the diameter of a
circular aperture as shown in Figs. 6A-7C or the width of a polygonal
aperture in Fig. 7D)). Claims 25-29 and 40 are likewise fully met by Shin.

Claims 30 and 31
We will not sustain the Examiner’s rejection of claim 30. The
Examiner refers to Paragraphs 0055-56 of Shin (Answer 18-19). These
passages, however, merely refer to exposing the catalyst pattern to source
gas (¶ 0055) or various deposition methods to synthesize the carbon
nanotubes (¶ 0056). While these techniques may spawn the growth of the

12 See p. 7-9, supra, of this opinion.
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nanostructures, we fail to see how these techniques necessarily influence the
direction of growth as claimed.
Although Appellants indicate that such direction-influencing
techniques are well-known in the art (e.g., using electric or magnetic
fields),13 we simply cannot say that such techniques are necessarily present
in Shin – an essential requirement for anticipation. Therefore, we are
constrained by the record before us to reverse the Examiner’s anticipation
rejection of claim 30 and claim 31 dependent thereon.14

Claim 32
We will also not sustain the Examiner’s rejection of claim 32 for
reasons similar to those we noted with respect to claims 30 and 31. While
techniques other than physical contact with the topological structure may be
well known in the art, such a consideration is germane to obviousness—not
anticipation. In short, while such non-contact techniques (e.g., magnetic
fields or fluid flow) may in fact be used in Shin -- a possibility that
Appellants readily acknowledge -- nothing in the reference indicates that
these techniques are necessarily present. In short, mere possibilities (or even
probabilities) alone cannot justify anticipation. For that reason alone, we
cannot sustain the Examiner’s rejection of claim 32.15

13 See id. at 6.
14 Notwithstanding our conclusion regarding anticipation, we nevertheless
address the question of whether it would have been obvious to one of
ordinary skill in the art at the time of the invention to provide such direction-
influencing techniques in Shin in a new grounds of rejection. See p. 17-19,
infra, of this opinion.
15 However, like the limitations of claims 30 and 31, we address the
obviousness of this limitation in a new grounds of rejection. See id.
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Claims 33-35 and 41
We will sustain the Examiner’s rejection of claims 33-35 and 41. Our
previous discussion regarding the topological structure in Shin reasonably
disclosing controlling both length and orientation applies equally here and
we incorporate that discussion by reference.16 We add that forming the
aperture in Shin certainly adapts the terrain of the substrate’s surface as
claimed. Regarding claim 34, since the topological structure itself controls,
at least in part, length and orientation of the nanostructures during growth, it
therefore mechanically controls such growth.
Regarding claim 35, our previous discussion regarding the
nanostructures’ physical contact with the topological structure in Shin
applies equally here and we incorporate that discussion by reference.17
For the foregoing reasons, claims 33-35 and 41 are fully met by Shin
and the Examiner’s rejection is therefore sustained.

Claims 36, 37, 42, and 43
We will also sustain the Examiner’s rejection of claims 36, 37, 42,
and 43. At the outset, our previous discussion pertaining to physical contact
with the topological structure in Shin reasonably controlling both length and
orientation applies equally here and we incorporate that discussion by
reference.18 We add that Shin forms multiple apertures 16 (topological
structures) for nanostructure growth as best seen in Figure 3D. As such,

16 See id. at 7-9.
17 See id. at 9.
18 See id.
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each respective aperture is formed in a different substrate region and has
corresponding nanostructures which grow within that particular aperture. In
short, the multiple apertures and associated nanostructure growth within
each aperture fully meets claims 36, 42, and 43. The Examiner’s rejection
of those claims is therefore sustained.
Regarding claim 37, since the nanostructures in Shin can grow in at
least two directions as shown in Figures 7A-8, distinct nanostructure growth
paths in different directions are obtained within each aperture. Therefore,
different apertures (i.e., in different substrate regions) would likewise
provide different growth paths in different directions. The claim is therefore
fully met by Shin.

II. The Anticipation Rejection Based on Zhang
Claims 1, 5, and 6
We now consider the Examiner’s rejection of claims 1 and 5-8 under
35 U.S.C. § 102(b) as being anticipated by Zhang. The Examiner has
indicated how the claimed invention is deemed to be fully met by Zhang
(Answer 12-13). Specifically, the Examiner considers the electrode shown
in Figure 1(d) to correspond to the recited topological structure (Answer 12,
24). Appellants, however, contend that even if the electrodes could be
considered topological structures, it is the electric field generated by the
electrodes – not the electrodes themselves – which controls the orientation of
the nanostructures (Br. 25; Reply Br. 18).
We will sustain the Examiner’s rejection of claims 1, 5, and 6. At the
outset, we agree with the Examiner that the electrode structure in Figure 1(d)
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of Zhang reasonably constitutes a “topological structure” – an interpretation
Appellants apparently acknowledge.19
Even assuming that the electric field solely controls orientation of the
nanostructure in Zhang, claim 1 is still fully met. The electrode (topological
structure) generates the electric field which in turn controls orientation. That
is, but for the existence of the topological structures (electrodes), the electric
field would not be generated and, consequently, the nanostructures’
orientation would not be controlled. Simply put, the electrodes cause
orientation to be controlled.
Claim 1 is therefore fully met by Zhang. Accordingly, we will
therefore sustain the Examiner’s rejection of claim 1 and claims 5 and 6
which fall with claim 1.

Claims 7 and 8
We will not, however, sustain the Examiner’s rejection of claims 7
and 8. Claim 7 calls for the topological structure to surround the catalyst.
The electrodes in Zhang, however, are located on either side of the catalyst.
The term “surrounding” is defined, in pertinent part, as “[to] be all round;
encircle.”20 Merely flanking the catalyst on either side hardly disposes the
topological structure “all round” or encircles the catalyst in accordance with

19 See Reply Br., at 18 (“[I]t is the electric field, rather than the topological
structure (electrode), that controls the orientation of the nanostructures.”)
(emphasis added).
20 See Compact Oxford English Dictionary, AskOxford.com, available at
http://www.askoxford.com/concise_oed/surround?view=uk (last visited
Aug. 29, 2007).
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the plain meaning of the term “surrounding.” For these reasons, we will not
sustain the Examiner’s rejection of claim 7.
Similarly, with respect to claim 8, we do not see how the catalyst
shown in Figure 1(c) can be equidistant from the perimeter of the growth
field in all directions as claimed. Not only does the electrode not surround
the catalysts as discussed above, the respective catalyst structures shown in
Figure 1(c) have unequal intervals. In view of this unequal spacing, we fail
to see how the catalysts can be equidistant from the perimeter of the growth
field – a perimeter that the Examiner has not clearly identified, but which we
assume is the area between the electrodes.
For the foregoing reasons, we will also not sustain the Examiner’s
rejection of claim 8.

III. New Grounds of Rejection Under 37 C.F.R. § 41.50(b)

Claims 30-32 are Unpatentable Under 35 U.S.C. § 103(a)

The following is a quotation of 35 U.S.C. 103(a) which forms the
basis for the obviousness rejections set forth in this opinion:
(a) A patent may not be obtained though the invention is not
identically disclosed or described as set forth in section 102 of this
title, if the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter
pertains. Patentability shall not be negatived by the manner in which
the invention was made.

Claims 30-32 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Shin in view of Zhang or, alternatively, Appellants’
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admitted prior art. Shin discloses all of the claimed subject matter including
controlling length and orientation of nanostructures utilizing physical
contact with the topological structures. See P. 7-9, supra, of this opinion,
hereby incorporated by reference. Shin, however, does not explicitly state
that techniques other than physical contact with the topological structure
(e.g., force-field or fluid flow techniques) are used to influence the direction
of growth.
These techniques, however, are well known in the art. Zhang, for
example, uses an electric field to align growth of nanostructures along the
electric-field direction. See, e.g., Zhang, paragraph bridging pages 3155 and
3156, and first full paragraph of page 3156 (noting that nanotubes grown
using applied electric field are well aligned along the electric-field
direction); see also id., at p. 3155, ¶ 1 (“Electric fields have been used to
manipulate the growth direction of [multiwalled carbon nanotubes]
previously….”).
Furthermore, Appellants readily admit that such techniques are well
known in the art. See ¶ 0019 of Appellants’ Specification (contrasting
influencing nanotube growth with topological structures with “such known
techniques as application of electric fields (either external to or arranged
locally on the substrate), application of magnetic fields, blowing gas in a
certain direction, a directed ion stream, control of carbon gas density
gradient during growth”) (emphasis added); see also Br., at 10.
In view of either Zhang or Appellants’ admission in the Specification,
it would have been obvious to one of ordinary skill in the art at the time of
the invention to utilize such techniques in conjunction with the system of
Shin to provide additional control over the direction of nanostructure
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growth. Such additional control of direction could employ devices that can
be automatically controlled, thus augmenting the mechanical
orientation/length control with automatically-controlled devices.

Shin Anticipates Claim 7
Claim 7 is rejected under 35 USC 102(b) as being anticipated by Shin.
The scope and breadth of the claim does not preclude the catalyst 18 which
is surrounded by the topological structure (sidewall of aperture 16) as best
seen in Figure 4 of Shin. As shown in that figure, the sidewall structure
encompasses or surrounds the catalyst 18 (i.e., the rectangle in the enlarged
detail figure below) at least in the plane of the sidewall at the exposed
portion.
For clarity, the aperture of Figure 4 of Shin has been enlarged as
shown below.

Enlarged Detail View of the Aperture of Figure 4 of Shin

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DECISION
We have sustained the Examiner's rejections with respect to claims 1,
3-6, 9-16, 25-29, 33-37, and 39-43. We have not, however, sustained the
Examiner’s rejections of claims 7, 8, and 30-32. Furthermore, we have
entered new grounds of rejection for claims 7 and 30-32. Therefore, the
Examiner’s decision rejecting claims 1, 3-16, 25-37, and 39-43 is affirmed-
in-part.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.” Section 41.50(b) also
provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE
OF THE DECISION, must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of the appeal as
to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so
rejected or new evidence relating to the
claims so rejected, or both, and have the
matter reconsidered by the examiner, in
which event the proceeding will be
remanded to the examiner. . . .

(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the
Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

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AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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