Ex Parte Ma et al

Patent Trial and Appeal Board

Sep 26, 2013

11841676 (P.T.A.B. Sep. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/841,676 08/20/2007 Jun Ma H4585 2377
84988 7590 09/27/2013
HYPERION CATALYSIS INTERNATIONAL , INC.
LEGAL DEPARMENT
930 CLOPPER ROAD
GAITHERSBURG, MD 20878
EXAMINER
MATZEK, MATTHEW D
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
09/27/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JUN MA, ALAN FISEHER,
and ROBERT HOCH
____________

Appeal 2012-007105
Application 11/841,676
Technology Center 1700
____________

Before CHUNG K. PAK, HUBERT C. LORIN, and JEFFREY T. SMITH,
Administrative Patent Judges.

PAK, Administrative Patent Judge

DECISION ON APPEAL
The named inventors (hereinafter “Appellants”)1 appeal under
35 U.S.C. § 134 from the Examiner’s final rejection of claims 1 and 8
through 25, all of the claims pending in the above-identified application.2
We have jurisdiction pursuant to 35 U.S.C. § 6(b).

1 Appellants identify the real party in interest as Hyperion Catalysis
International Inc. (See Appeal Brief filed October 17, 2011 (“App. Br.”) at
3.)
2 Appellants state that “[t]he final rejection of pending claims 1 and 8-25 is
hereby appealed.” (See App. Br. 5.)
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STATEMENT OF THE CASE
The subject matter on appeal “lies in the field of submicron graphitic
carbon fibrils, commonly referred to as nanotubes” and in particular,
“carbon nanotube structures containing both single walled and multi walled
carbon nanotubes….” (See Spec. ¶¶ [0002] and [0003].) The “[c]arbon
nanotube structures include assemblages, mats, plugs, networks, rigid porous
structures, extrudates, etc.” (Spec. ¶ [0028].) The assemblages are defined
as:
[C]arbon nanotubes structures which have relatively uniform
properties in along one, preferably two and most desirable three
dimensional axis of the three dimensional assemblage. (E.g.,
U.S. Patent No. 5,691,054 hereby incorporated by reference).
Two dimensionally uniform assemblages take the form of mats.
Three dimensionally uniform assemblages may take the form of
the container in which they are formed and are typically called
plugs. [(Spec. ¶ [0029].)]

These “structures have densities between 0.001 and 0.50 g/mL, preferably
between 0.05-0.5 g/mL” and may have a ratio of single walled carbon
nanotubes to multi walled carbon nanotubes in the range from 1/1000 to
1000/1. (Spec. ¶¶ [0059] and [0060].)
In one exemplary embodiment, these mixed structures are made by
dispersing single wall carbon nanotubes (aggregates or individual tubes) and
then adding and mixing multi walled carbon nanotubes (aggregates or
individual tubes) with the dispersed single wall carbon nanotubes. (Spec. ¶
[0064].) In another exemplary embodiment, these mixed structures may be
made by in-situ growing single-walled nanotubes on the surface of dispersed
multi walled nanotube supported catalyst, as shown in, for example, U.S.
Patent No. 6,514,897 incorporated by reference into the Specification.
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(Spec. ¶ [0065].) According to paragraphs [0043], [0044], and [0045] of the
Specification,
The terms “nanotube”, “nanofiber” and “fibril” are used
interchangeably to refer to single walled or multiwalled carbon
nanotubes. …
“Multiwalled nanotubes” as used herein refers to carbon
nanotubes which are substantially cylindrical, graphitic
nanotubes of substantially constant diameter and comprise
cylindrical graphitic sheets or layers whose c-axes are
substantially perpendicular to the cylindrical axis, such as those
described, e.g., in U.S. Patent No. 5,171,560 to Tennent, et al.
“Single walled nanotubes” as used herein refers to carbon
nanotubes which are substantially cylindrical, graphitic
nanotubes of substantially constant diameter and comprise a
single cylindrical graphitic sheet or layer whose c-axis is
substantially perpendicular to their cylindrical axis, such as
those described, e.g., in U.S. Patent No. 6,221,330 to Moy, et
al. Singe walled carbon nanotubes may also be referred to as
“SWTs” or SWNTs”.

Details of the appealed subject mattered are recited in illustrative
claims 1, 13, and 223 reproduced from the Claims Appendix to the Appeal
Brief as shown below:
1. A carbon nanotube structure comprising single walled
carbon nanotubes and multi walled carbon nanotubes, wherein said structure
has a density between 0.001 and 0.5 g/mL.

13. A carbon nanotube structure comprising single walled
carbon nanotubes and multi walled nanotubes;

wherein:

3 For purposes of this appeal, we limit our discussion to argued claims 1, 9,
10, 13, and 22 consistent with 37 C.F.R. § 41.37(c)(1)(vii).
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the structure has a density between 0.001 and 0.5 g/mL;
and

the structure is selected from the group consisting of an
assemblage, a plug, a network, and a rigid porous structure, and an
extrudates.

22. A carbon nanotube structure comprising single walled
carbon nanotubes and multi walled carbon nanotubes:

wherein:

the structure has a density between 0.0001 and 0.5 g/mL;
and

the structure comprises a mat having a thickness between
0.02 and 0.50 millimeters.

(App. Br. 25-27 (Claims App’x 1-3)).
Appellants seek review of the following grounds of rejection
maintained by the Examiner in the Examiner’s Answer mailed December 21,
2011(“Ans.”):
(1) Claims 1, 8, 13 through 18, and 22 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Rueckes4 and Tennent ‘054;5
(2) Claim 9 under 35 U.S.C. § 103(a) as unpatentable over
combined teachings of Rueckes, Tennent ‘054, and Tennent ‘965;6 and
(3) Claims 10 through 12, 19 through 21, and 23 through 25 under
35 U.S.C. § 103(a) as unpatentable over the combined teachings of Rueckes,

4 U.S. Patent Application Publication 2003/0198812 A1 published in the
name of Rueckes et al. on October 23, 2003(“Rueckes”).
5 U.S. Patent 5,691,054 issued to Tennent et al. on November 25, 1997
(“Tennent ‘054”).
6 U.S. Patent 6,099,965 issued to Tennent et al. on August 8, 2000 (“Tennent
‘965”).
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Tennent ‘054, and Sun.7 (See App. Br. 8.)
In support of their positions, Appellants rely on the following
evidence:
Bethune et al. (“Bethune”) U.S. 5,424,054 June 13, 1995

ISSUE and CONCLUSION
The dispositive question raised is: Did the Examiner err in
determining that one of ordinary skill in the art, armed with the knowledge
reflected in Rueckes and Tennent ‘054, would have been led to employ
single walled and multi-walled nanotubes in the form of an assemblage
structure having the density recited in claims 1 and 13 and the thickness
recited in claim 22 within the meaning of 35 U.S.C. §103(a)? On this
record, we answer this question in the negative.
PRINCIPLES OF LAW
As recently stated by the Supreme Court in KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007):
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue.

The apparent reason for combining the teachings of the applied prior art
need not be identical to the reason contemplated by Applicants to establish

7 U.S. Patent Application Publication 2006/0054555 A1 published in the
name of Sun on March 16, 2006 (“Sun”).
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obviousness. In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“[a]s long
as some motivation or suggestion to combine the references is provided by
the prior art taken as a whole, the law does not require that the references be
combined for the reasons contemplated by the inventor.”)
“[W]hen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. at 417 (quoting Sakraida v. Ag Pro,
Inc., 425 U.S. 273, 282 (1976)); see also In re Kerkhoven, 626 F.2d 846, 850
(CCPA 1980)(“It is prima facie obvious to combine two compositions each
of which is taught by the prior art to be useful for the same purpose, in order
to form a third composition which is to be used for the very same purpose.” )
Appellants must identify reversible error in the Examiner’s §103(a)
rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[E]ven
assuming that the examiner had failed to make a prima facie case, the Board
would not have erred in framing the issue as one of ‘reversible error.’”).

FACT FINDINGS and ANALYSIS
As correctly found by the Examiner at pages 5 and 6 of the Answer,
Rueckes discloses fabricating electrically conductive articles, including
electrical circuits and electrodes, from carbon nanotube films, fabrics, or
layers containing single walled carbon nanotubes, multi-walled nanotubes,
or a combination of single-walled and multi-walled carbon nanotubes. (See
also Rueckes, ¶¶ [0006], [0008], [0113], and [0135].) Rueckes also
discloses that its non-woven fabric may be in the form of a matted layer or
layers of nanotubes as acknowledged by Appellants at page 10 of the Appeal
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Brief. (See also Rueckes, ¶¶ [0051], [0054], [0113], [0121], and [0135].)
Although the Examiner concedes that Rueckes does not specifically
mention assemblage structures having particular densities and thicknesses as
recited in claims 1, 13, and 22,8 the Examiner relies on the disclosure of
Tennent ‘054 to show obviousness of forming such structures with single-
walled and multi-walled carbon nanotubes, In particular, Tennent ‘054
relied upon by the Examiner teaches employing carbon fibrils, broadly
inclusive of single-walled and multi-walled carbon nanotubes, to form an
assemblage structure in the form of a plug or porous mat useful for forming
electrically conductive articles, such as electrodes in fuel cells and batteries.
(Compare Ans. 6 and Tennent ‘054, col. 3, ll. 16-56 with Spec. ¶¶ [0002],
[0003], [0043], [0044], and [0045].) The Examiner correctly found that the
assemblage structure taught by Tennent ‘054, like Appellants, has a bulk

8 In the event of further prosecution, both the Examiner and Appellants are
reminded that the claimed assemblage structure includes the matted layer
taught by Rueckes as is apparent from the broad description of such
structure in the Specification as indicated supra. Rueckes discloses that “the
electrical properties of the layers and electrically conductive articles can be
tuned by controlling the cross section of the nanotube ribbons. For example,
the ribbon thickness may be increased at a given width and nanotube
density. The higher the cross-section, the greater the number of conduction
channels leading to enhanced electrical properties.” (Rueckes, ¶ [0141]
(Emphasis added).) According to paragraph [0054] of Rueckes, catalysts
may be used to “assist in growing the nanotubes with specific densities
either more or less dense as is desired.” Thus, even without the disclosure
of Tennent ‘054, one of ordinary skill in the art would have been led to form
optimum thicknesses and densities for a given assemblage structure (e.g., a
matted layer useful for a given electrically conductive article) via routine
experimentation. In re Boesch, 617 F.2d 272, 276 (CCPA
1980)(“[D]iscovery of an optimum value of a result effective variable…is
ordinarily within the skill of the art.”);

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density of from 0.001 to 0.50 gm/cc(mL), typically 0.2g/cc, and a thickness
between 0.02 and 0.50 millimeters. (Compare Ans. 6 and Tennent ‘054, col.
3, ll. 24-25 and col. 5, ll. 50-51 with claims 1, 13, and 22.) Tennent ‘054,
like Appellants, describes its highly advantageous three-dimensional,
macroscopic assemblages of randomly oriented carbon fibrils as having
“relatively uniform physical properties along one, preferably two and most
desirably three dimensional axis of the three-dimensional assemblage.”
(Compare Tennent ‘054, col. 3, ll. 37 -42 with Spec. ¶ [0029].) Tennent
‘054 describes the carbon fibrils used for forming such assemblage
structures as “being substantially cylindrical with a substantially constant
diameter, having c axes substantially perpendicular to their cylindrical axis,
being substantially free of pyrolytically deposited carbon and having a
diameter between about 3.5 and 70 nanometers” which according to
Appellants at paragraphs [0002], [0003], [0043], [0044], and [0045] of the
Specification, are inclusive of the single-walled and multi-walled carbon
nanotubes or includes characteristics or morphology represented by the
single-walled and multi-walled carbon nanotubes . (Compare Tennent ‘054,
col. 3, ll. 18-24 with Spec. ¶¶ [0002], [0003], [0043], [0044], and [0045].)9
Given the above collective teachings, we concur with the Examiner
that one of ordinary skill in the art, armed with the knowledge reflected in
Rueckes and Tennent ‘054, would have been led to employ either single-
walled carbon nanotubes, multi-walled carbon nanotubes, or a combination
of single-walled and multi-walled carbon nanotubes as the carbon fibrils in

9 Appellants also acknowledge at paragraph 0011 of the Specification that it
was generally accepted in the art that carbon nanotubes has morphology
similar to that of catalytically grown carbon fibrils.

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forming the assemblage structures having a bulk density between about
0.001 to 0.50 gm/cc (ml) and a thickness between 0.02 and 0.50 millimeters
taught by Tennent ‘054, with a reasonable expectation of successfully
forming such assemblage structures useful for electrically conductive
articles, such as electrodes in fuel cells and batteries.10
In reaching this determination, we have carefully considered
Appellants’ argument that at pages 10 and 11 of the Appeal Brief that
Rueckes does not provide an enabling disclosure for the claimed subject
matter. However, this argument is not persuasive for at least two reasons.
First, “a non-enabling reference may qualify as prior art for the purpose of
determining obviousness under § 103.” Symbol Techs., Inc. v. Opticon, Inc.,
935 F.2d 1569, 1578 (Fed. Cir. 1991). Second, even if such enablement
theory applies, Appellants have not demonstrated that one of ordinary skill
in the art would not have arrive at the subject matter recited in claims 1, 13,
and 22, without undue experimentation based on the disclosures of
Rueckes11 coupled with information known in the art. In re Antor Media

10 Notwithstanding Appellants’ arguments to the contrary in the Appeal
Brief, we find that Tennent ‘054 and/or the knowledge of one of ordinary
skill in the art acknowledged in the Specification would have provided a
reasonable expectation of forming assemblage structures having the claimed
densities and thicknesses via employing carbon nanotubes due to similarities
in characteristics and/or morphology between the carbon nanotubes and
carbon fibrils and/or due to the requirements set forth by Tennent ‘054 as
explained supra. See also, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1364 (Fed. Cir. 2007) (“the expectation of success need only be reasonable,
not absolute”); In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988)
(“Obviousness does not require absolute predictability of success. . . . For
obviousness under § 103, all that is required is a reasonable expectation of
success.” (citations omitted)).
11 Rueckes discloses a film with single- and/or multi-walled nanotubes
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Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012) (A prior art printed publication,
like a prior art patent, “is presumptively enabling barring any showing to the
contrary by a patent applicant or patentee.”); In re Morsa, 713 F.3d 104, 110
(Fed. Cir. 2013) (“[A]n applicant must generally do more than state an
unsupported belief that a reference is not enabling.”) Appellants’ arguments
in the Appeal Brief not only are unsupported by any evidence, but also
ignore the state of art as represented by Appellants’ own Specification. In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (explaining that undue
experimentation is determined based on both the nature of the invention and
the state of the art.)
Appellants also contend that one of ordinary skill in the art would not
have been led to employ a combination of single-walled and multi-walled
carbon nanotubes as the carbon fibrils in forming the assemblage structure of
Tennent ‘054. (App. Br. 12-14.) In support of this contention, Appellants
argue that Tennent ‘054 does not disclose single-walled carbon nanotubes
and single-walled nanotubes did not exist at the time of Tennent ‘054. (App.
Br. 14.) According to Appellants, claim 3 of U.S. Patent 5,424,054 issued
to Bethune et al. on June 13, 1995 (filed May 5, 1993) reciting a single-
walled carbon nanotubes indicates that at the time of Tennent ‘054, single-
walled carbon nanotube did not exist. (App. Br. 14-15.) In so arguing,

which is grown using CVD or deposited, e.g., using spin coating. (Rueckes,
¶ [0113].) Rueckes also discloses forming multilayer ribbons and mattes
with single- and/or multi-walled nanotubes using proper growth conditions,
such as catalyst composition and concentration, functionalization of the
underlying surface, spin coating parameters, growth time, temperature and
gas concentrations, some of which are described by Appellants at pages 17
and 18 of the Specification. (Compare Rueckes, ¶¶ [0121] and [0135] with
Spec. 17-18.)
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Appellants ignore the language of 35 U.S.C. §103 that requires us to
determine obviousness from the perspective of one of ordinary skill in the
art “at the time the invention was made,” rather than the perspective of one
of ordinary skill in the art at the time Tennent ‘054 was published. Nor
have Appellants considered the collective teachings of Rueckes and Tennent
‘054 as discussed supra. In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(“[T]he test [for obviousness] is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”).
Accordingly, based on the reasons set forth above and in the Answer,
we find no reversible error in the Examiner’s determination that one of
ordinary skill in the art, armed with the knowledge reflected in Rueckes and
Tennent ‘054, would have been led to employ single walled and multi-
walled nanotubes in the form of an assemblage structure having the density
recited in claims 1 and 13 and the thickness recited in claim 22 within the
meaning of 35 U.S.C. §103(a)
As to the Examiner’s separate §103 rejection of claims 10 through 12,
19 through 21, and 23 through 25, Appellants repeat the same arguments
raised above to impart patentability to the subject matter claimed. (App. B r.
20-21.) Thus, based on the same reasons set forth above and in the Answer,
we also find no reversible error in the Examiner’s determination regarding
obviousness of the subject matter recited in claims 10 through 12, 19
through 21, and 23 through 25 based on the collective teachings of Rueckes,
Tennent ‘054, and Sun.
As to the Examiner’s separate §103 rejection of claim 9, Appellants,
in addition to repeating the same arguments raised above, argue that one of
ordinary skill in the art would not have looked to the teaching of Tennent
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‘965 to improve the assemblage structure suggested by Rueckes and Tennent
‘054. (App. Br. 19-20.) We do not agree with Appellants for the reasons set
forth at pages 6, 7, and 12 through 14 of the Answer. We only wish to
emphasize that Tennent ‘965 teaches using carbon fibrils or nanotubes,
inclusive of the carbon fibrils and nanotubes taught by Tennent ‘054 and
Rueckes, respectively, to form assemblage structures having a significant
surface area, including an accessible surface area of greater than 400 m2/g
(inclusive of a surface area between 500 to 1000 m2/g recited in claim 9) due
to their sizes and shapes. (Col. 5, ll. 25-28, col. 6, ll. 37-42, and col. 11, 19-
23.) Thus, based on the findings set forth above and the Answer, we find no
reversible error in the Examiner’s determination that one of ordinary skill in
the art would have been led to form, inter alia, appropriately or optimally
sized and/or shaped assemblage structures having the increased surface area
recited in claim 9 per the collective teachings of Rueckes, Tennent ‘054, and
Tennent ‘965, with a reasonable expectation of successfully using them for
electrically conductive articles. In re Peterson, 315 F.3d 1325, 1329-30
(Fed. Cir. 2003) (“In cases involving overlapping ranges, we and our
predecessor court have consistently held that even a slight overlap in range
establishes a prima facie case of obviousness.)

ORDER
Upon consideration of the record, and for the reasons given above and
in the Answer, it is
ORDERED that the Examiner’s decision rejecting the claims on
appeal under 35 U.S.C. § 103(a) is AFFIRMED; and
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FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a) (2010).

AFFIRMED
cam