Ex Parte Nam et al

Board of Patent Appeals and Interferences

Mar 23, 2011

11117462 (B.P.A.I. Mar. 23, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOONG-WOO NAM, JONG-HWAN PARK,
and MEE-AE RYU
____________________

Appeal 2010-001623
Application 11/117,462
Technology Center 2800
____________________

Before MAHSHID D. SAADAT, MARC S. HOFF,
and BRADLEY W. BAUMEISTER, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-001623
Application 11/117,462

2
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-4, 6-16, and 19, which constitute all the claims pending in this
application as claim 5 has been canceled and claims 17 and 18 have been
withdrawn from consideration. We have jurisdiction under 35 U.S.C.
§ 6(b).2
We affirm.

STATEMENT OF THE CASE
Appellants’ invention is directed to a carbon nanotube (CNT) having
defect-free carbon crystals used as an electron emitting source provided in
an electron emission device (Spec. ¶ [0008]). Claim 1 is illustrative of the
invention and reads as follows:
1. A carbon nanotube with Raman spectrum having a G band and
a D band, with a ratio of a G band peak integral (IG) and a D band
peak integral (ID) being at least 5.

The Examiner relies on the following prior art in rejecting the claims:
Tang US 7,202,596 B2 Apr. 10, 2007
Yang US 7,250,148 B2 Jul. 31, 2007

Claims 1-4, 6-16, and 19 stand rejected under the second paragraph of
35 U.S.C. § 112 as being indefinite.
Claims 1-4, 6-16, and 19 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being
obvious over Yang.

2 An oral hearing for this application was held on February 3, 2011.
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Application 11/117,462

3
Claims 1-4, 6-16, and 19 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being
obvious over Tang.

ISSUES
The issue raised by Appellants’ arguments against the § 112 rejection
is whether the Examiner’s rejection is based on a misunderstanding of the G
band peak integral and the D band peak integral (App. Br. 7-10).
The dispositive issue raised by the arguments against the
§§ 102(e)/103(a) rejections is whether the Examiner erred in finding that
Yang or Tang discloses or suggests a ratio of a G band peak integral (IG) and
a D band peak integral (ID) being at least 5 (App. Br. 21-24).3

ANALYSIS
The 35 U.S.C. § 112, Second Paragraph, Rejection
The Examiner interprets claim 1 as reciting D and G bands that are
defined by the location of the center of the band rather than by its width,
which is necessary for determining the integration limits (Ans. 3-4). The
Examiner finds that the Specification does not define the limits or the exact
area under the bands needed for determining the ratio (Ans. 4-5). Appellants
respond by citing MPEP § 2173.02 and Phillips v. AWH Corp., 415 F.3d
1303 (Fed. Cir. 2005), as support for the proposition that, based on the
definition of integral and the disclosure in paragraph [0023] of the

3 The Examiner has withdrawn the rejection of claims 1-4, 6-16, and 19
under 35 U.S.C. § 102(e) or, in the alternative, under 35 U.S.C. § 103(a)
over Maruyama (Ans. 2).
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Application 11/117,462

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Specification, one of ordinary skill in the art knows what the G band peak
integral and the D band peak integral mean (App. Br. 7-9). Appellants
further contend that all the parameters in the claims need not be defined
because the claimed ratio would not be changed for the same sample even
though the frequency ranges related to the G band and the D band may be
shifted (App. Br. 10-12).
The Examiner responded to this argument by stating that the limits of
integration must be defined in order to obtain the exact integral or integral
ratio (Ans. 7-9). Appellants, in the Reply Brief, state that while the
frequency ranges related to the G and D bands can be shifted and the graph
moves in a right or left direction, the peak area and the ratio remain
unchanged (Reply Br. 5-10).
We agree with Appellants’ position that defining all the parameters is
not necessary for the person of ordinary skill in the art to determine the peak
integral ratio of the G and D band peaks, even if variations in those
parameters may shift the G and D bands. Therefore, we do not sustain the
rejection of claims 1-4, 6-16, and 19 under § 112, second paragraph.

The 35 U.S.C. §§ 102(e)/103(a) Rejection over Yang
In explaining the rejection of claim 1 for anticipation or, in the
alternative, obviousness over Yang, the Examiner pointed to Figures 8, 12D,
and 18B of Yang and reasoned that the integral ratio may be determined
based on the height ratio if the integral is taken over a sufficient range or
width (Ans. 6). Appellants argue that the disclosed portions of Yang relate
to the ratio of the heights of the G and D peaks which is different from the
integral ratio (App. Br. 21-23). The Examiner responds (Ans. 10-11) that an
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Application 11/117,462

5
estimation of the integration of the area under the G and D bands in Figure 8
of Yang shows a ratio of 5 or larger, which meets the claim limitation.
In the Reply Brief at page 19, Appellants have only addressed the
integral ratio of the G and D band peaks shown in Figure 8 of Yang.
However, the Examiner’s position was based on Figures 12D and 18B as
well as Figure 8 of Yang. Even if the calculations presented by Appellants
with respect to estimating the ratio of the G and D band peak integrals
shown in Figure 8 are accurate and result in a ratio of less than 5, we remain
unpersuaded that the same is true with respect to Figures 12D and 18B. In
other words, as the G band peak in these two figures is shown to be larger
than that of Figure 8, the area under the G band peak becomes larger.
Therefore, even assuming for the sake of argument that Appellants’
approach in calculating the area under each band peak is correct, Appellants
have neither argued, nor provided any evidence, that the ratios of the G band
peak integral and the D band integral in Figures 12D and 18B would fail to
be larger than 5.
For the foregoing reasons, we sustain the rejection of claim 1 for
anticipation or, in the alternative, obviousness over Yang. For the same
reasons, we sustain the rejection of the remaining claims because those
claims are not separately argued. In re Nielson, 816 F.2d 1567, 1572 (Fed.
Cir. 1987).

The 35 U.S.C. §§ 102(e)/103(a) Rejection over Tang
With respect to the rejection of claim 1 for anticipation or, in the
alternative, obviousness over Tang, the Examiner asserts that the nanotube
disclosed in Tang has the claimed integral ratio because the disclosed
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Application 11/117,462

6
nanotube has the same current density disclosed by Appellants (Ans. 12).
Appellants contend that disclosing a specific current density does not mean
that Tang’s nanotube has a G band and a D band with a peak integral ratio of
5 (App. Br. 24; Reply Br. 22-24).
We agree with Appellants’ position. Contrary to the Examiner’s
assertion (Ans. 12) that because the product disclosed in Tang is similar to
that of Appellants, the peak integral ratio must also be the same, Tang does
not rely on an integral ratio of the G and D bands for defining the nanotube
characteristics. More specifically, Tang’s disclosure includes no indication
that a ratio of a G band peak integral and a D band peak integral is
considered or has a value of at least 5.
Based on our discussion above, we do not sustain the rejection of
claim 1 for anticipation or, in the alternative, obviousness over Tang.
Additionally, we do not sustain the rejection of the other independent claims
which recited similar limitations, nor of the dependent claims over Tang.

CONCLUSIONS
1. The Examiner erred in rejecting claims 1-4, 6-16, and 19 under
the second paragraph of 35 U.S.C. § 112 as being indefinite.
2. The Examiner did not err in finding that Yang discloses or
suggests a ratio of a G band peak integral (IG) and a D band peak integral
(ID) being at least 5.
3. The Examiner erred in finding that Tang discloses or suggests a
ratio of a G band peak integral (IG) and a D band peak integral (ID) being at
least 5.

Appeal 2010-001623
Application 11/117,462

7
ORDER
The Examiner’s decision rejecting claims 1-4, 6-16, and 19 is
affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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