Ex Parte Mayne-L et al

Patent Trial and Appeal Board

May 31, 2018

13121377 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/121,377 06/17/2011
20995 7590 06/04/2018
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Martine Mayne-L'Hermite
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.
BREVA3.0l 1APC 8351
EXAMINER
MUI, CHRISTINE T
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
06/04/2018 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTINE MA YNE-L'HERMITE,
SERGE P ALACIN, PASCALE CHENEVIER,
JEROME CHANCOLON, and AURELIEN GORIER
Appeal2017-008678
Application 13/121,3 77
Technology Center 1700
Before TERRY J. OWENS, A VEL YN M. ROSS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1, 2, and 4--23. 3 We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.
1 In this Decision, we refer to the Specification filed March 28, 2011
("Spec."), the Final Office Action dated May 9, 2016 ("Final Act."), the
Appeal Brief filed February 6, 2017 ("Appeal Br."), the Examiner's Answer
dated March 23, 2017 ("Ans."), and the Reply Brief filed May 23, 2017
("Reply Br.").
2 Appellants identify the real party in interest as Commissariat a L'Energie
Atomique et aux Energies Alternatives. Appeal Br. 3.
3 Claim 3 has been canceled. Appeal Br. 20 (Claims App.). Claim 24 is
withdrawn from consideration by the Examiner. Final Act. 1.
Appeal2017-008678
Application 13/121,377
The subject matter of the claims on appeal relates to chemical sensors
containing multi-walled carbon nanotubes (MWCNT) (i.e., nanotubes with
several graphene layers). Spec. 1, 11. 10-12, 12, 11. 17-22. Claim 1,
reproduced below, is illustrative of the claims on appeal.
1. A device for detecting at least one chemical
compound, the device comprising at least one carbon nanotube
with several graphene layers, wherein at least one molecule
bearing a group G1 capable of reacting with the chemical
compound or a precursor of the group G 1 is grafted on the
carbon nanotube with several graphene layers, wherein the
carbon nanotube with several graphene layers is annealed under
an inert atmosphere in a temperature above 1500°C after being
prepared, and before being grafted.
Appeal Br. 19-20 (Claims App.).
DISCUSSION
The Examiner maintains the rejection of claims 1, 2, 8-21, and 23
under pre-AIA 35 U.S.C. § I03(a) as unpatentable over Lieber et al.
(US 2002/0117659 Al, published August 29, 2012) ("Lieber") in view of
Cambaz et al., Noncatalytic synthesis of carbon nanotubes, graphene and
graphite on Sic, 46 Carbon 841-849 (2008) ("Cambaz"). Ans. 2-3. The
Examiner also maintains the rejection of claims 4--7 and 22 under pre-AIA
35 U.S.C. § I03(a) as unpatentable over Lieber in view of Cambaz, and
further in view of Bahr et al., Highly Functionalized Carbon Nanotubes
Using in Situ Generated Diazonium Compounds, 13 Chem. Mater 3 823-
3824 (2001) ("Bahr"). Ans. 9.
We focus our discussion on independent claim 1 in deciding this
appeal.
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Appeal2017-008678
Application 13/121,377
The Examiner bears the initial burden of presenting a prima facie case
establishing the non-patentability of the rejected claims. In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992).
Claim 1 's device comprises "at least one carbon nanotube with several
graphene layers."
The Examiner finds that Lieber' s paragraph 81 discloses that its
device may include "single walled nanotubes (SWNTs) that exhibit unique
electronic, and chemical properties that are particularly suitable for
molecular electronics. Structurally, SWNTs are formed of a single graphene
sheet rolled into a seamless tube .... " Ans. 10. The Examiner interprets
Lieber's SWNT that is rolled into a tube from a single graphene sheet to be
the same as claim 1 's "carbon nanotube with several graphene layers." Id.
Appellants argue that Lieber's single-walled nanotube is formed of a
single graphene layer, and is clearly distinguishable from a "carbon
nanotube with several graphene layers," as recited in claim 1. Appeal Br. 9.
Appellants' argument is persuasive of reversible error. Appellants'
Specification states that nanotubes with several graphene layers are known
as "multi-walled nanotubes, multi-sheet nanotubes or MWNT," and also
distinguishes multi-walled (multi-sheet) nanotubes from single-walled
(single-sheet) nanotubes, such as the nanotubes used in Lieber' s device.
Spec. 12, 11.17-27 ("the use of nanotubes with several functionalized
graphene layers ... does not comprise their conduction properties unlike
single-sheet carbon nanotubes. "). Based on this description, we agree with
Appellants that Lieber's device comprising a single-walled nanotube is not
the same as claim 1 's "device comprising at least one carbon nanotube with
several graphene layers."
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Appeal2017-008678
Application 13/121,377
In response to Appellants' argument, and to cure the deficiency in
Lieber's disclosure, the Examiner relies on Cambaz. Ans. 11. The
Examiner finds that Cambaz teaches carbon nanotubes built of 2, 3 and 4
graphene layers. Id. (citing Cambaz, 845 Figure 7d-7f).
Although Cambaz discloses both single-walled nanotube and multi-
walled nanotubes, which Appellants do not dispute, we agree with
Appellants that the Examiner has not established an apparent reason for
using Cambaz's multi-walled carbon nanotube in Lieber's detection device.
Reply Br. 3; Ans. 11. "[R ]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006)
(quoted with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418
(2007)).
Claim 1 also requires that "the carbon nanotube with several graphene
layers is annealed under an inert atmosphere in a temperature above 1500°C
after being prepared, and before being grafted." The Examiner considers
this recitation in claim 1 to be a product-by-process limitation. Ans. 12.
As the Examiner correctly points out, "[ e ]ven though product-by-
process claims are limited by and defined by the process, determination of
patentability is based on the product itself." See In re Thorpe, 777 F.2d 695,
698 (Fed. Cir. 1985). According to the Examiner, Appellants have not
provided any evidence to differentiate Lieber's and Cambaz's devices from
the claimed device. Ans. 12; see also Final Act. 7 (finding that Lieber
discloses the claimed device and its structural components, but does not
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Appeal2017-008678
Application 13/121,377
disclose the method of making the device including annealing temperature
and sequence of annealing prior to grafting). 4
We disagree with the Examiner's assertion. Appellants have provided
evidence that annealing multi-walled carbon nanotubes under an inert
atmosphere in a temperature above 1500°C after being prepared, but before
being grafted with a functional molecule, produces a device (sensor) with
increased sensitivity towards chlorine diluted in nitrogen as compared with
multi-walled carbon nanotubes not subjected to such an annealing step (i.e.,
"crude carbon nanotubes"). See Appeal Br. 12-13 (citing Spec. 50-52
(Example 4; Fig. 11); see also Spec. 49-50 (Example 3; Fig. 5). As
Appellants correctly point out, the Examiner failed to address this evidence.
Reply Br. 5.
When an applicant comes forward with rebuttal evidence, the PTO
must consider such evidence before making a conclusion of obviousness.
In re Sullivan, 498 F.3d 1345, 1352 (Fed. Cir. 2007) ("Whether the
composition would have been obvious cannot be determined without
considering evidence attempting to rebut the prima facie case."). Regardless
of the merits or sufficiency of the proffered evidence, the Examiner's failure
to establish a prima facie case or to properly acknowledge, consider, and
evaluate the evidence in the Final Action and/or Answer constitutes
reversible error. See Final Act. 2--4, and Ans. 12; Sullivan, 498 F.3d at
1352-53.
For at least the above reasons, we do not sustain the rejections of
claims 1, 2, and 4--23 under 35 U.S.C. § 103(a).
4 As discussed in this Decision, we disagree with the Examiner's finding that
Lieber discloses all the structural components of claim 1 's device.
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Application 13/121,377
DECISION
The rejections of claims 1, 2, and 4--23 are reversed.
REVERSED
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