Ex Parte PARSAPOUR

Patent Trial and Appeal Board

Dec 19, 2014

12251228 (P.T.A.B. Dec. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FARZAD PARSAPOUR
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Appeal 2012-009273
Application 12/251,228
Technology Center 1700
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Before ADRIENE LEPIANE HANLON, CHARLES F. WARREN, and
ROMULO H. DELMENDO, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board under 35 U.S.C. § 134(a) from the
decision of the Primary Examiner finally rejecting claims 1–16: under
35 U.S.C. § 112, second paragraph, claims 1–16; and under 35 U.S.C.
§ 103(a), claims 1, 2, 7, 10–14, and 16 over Sun (US 2002/0160111 A1) and
Ala-Kleme (US 2006/0096866 A1), claims 1, 4–6, and 10–16 over Sun and
Lo (US 6,228,753 B1), claims 1, 5, and 10–16 over Sun and Asakawa (WO
2007/053579 A2), claim 3 over Sun, Ala-Kleme, and Chung (US 6,361,614
B1), and claims 7–9 over Sun, Ala-Kleme, and Chih (US 6,256,455 B1).
App. Br. 8; Ans. 4, 5, 8, 11, 13, 14. We have jurisdiction. 35 U.S.C. § 6(b).
We affirm the decision of the Primary Examiner.
Claim 1, illustrates Appellant’s invention of a method for fabricating a
plurality of carbon nanotube (CNT) structures, and is representative of the
claims on appeal:
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1. A method for fabricating a plurality of carbon nanotube structures,
the method comprising:
providing a substrate;
forming a non-catalytic metal layer on the substrate;
forming a catalytic metal layer on the non-catalytic metal layer;
subjecting the catalytic metal layer to an ultrasonication and exposure
to water step, the ultrasonication and exposure to water step comprising:
submerging the catalytic metal layer in a liquid bath;
ultrasonicating the catalytic metal layer and the liquid bath; and
exposing the catalytic metal layer to water; and
after ultrasonication and exposure to water step, forming the plurality
of carbon nanotube structures on the substrate in the presence of the catalytic
metal layer.
App. Br. 43 (VIII. Claims App’x). Spec. ¶¶ 0008–0010.
Appellant argues the first four grounds of rejection on independent
claims 1 and 14 as a group, relying on the same arguments with respect to
the fifth and sixth grounds of rejection. App. Br. 9, 14, 24, 33, 41. Thus, we
decide this appeal based on claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
OPINION
I. 35 U.S.C. § 112, second paragraph
We agree with Appellant that the Examiner erred in determining that
claim 1 does not comply with § 112, second paragraph, because the claim
does not specify definitions for the terms “non-catalytic metal layer” and
“catalytic metal layer” and the Specification does not provide a standard to
determine whether a metal layer is “non-catalytic” or “catalytic,” and thus,
one skilled in the art is not appraised of the scope of the method specified in
claim 1. Ans. 4–5, 15–16; App. Br. 9–12. On this record, we are of the
view that the Examiner has not established a prima facie case of non-
compliance with § 112, second paragraph, by showing that when the
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language of claim 1 is considered as a whole as well as in view of the
written description in the Specification as it would be interpreted by one of
ordinary skill in the art, the claim in fact fails to set out and circumscribe a
particular area with a reasonable degree of precision and particularity. See,
e.g., Marley Mouldings Ltd. v. Mikron Indus., Inc., 417 F.3d 1356, 1359
(Fed. Cir. 2005) (quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971);
see also, e.g., In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994)); The
Beachcombers, Int’l., Inc. v. WildeWood Creative Prods., Inc., 31 F.3d
1154, 1158 (Fed. Cir. 1994).
We first interpret the claim terms “non-catalytic metal layer” and
“catalytic metal layer” by giving these terms the broadest reasonable
interpretation in the context of the claim language consistent with the
Specification as it would be interpreted by one of ordinary skill in the art.
See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259–60 (Fed. Cir.
2010); In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007); In
re Morris, 127 F.3d 1048, 1054–55 (Fed. Cir. 1997); In re Zletz, 893 F.2d
319, 321–22 (Fed. Cir. 1989). We determine that the plain language of
claim 1 specifies a method comprising at least the steps of, among other
steps, forming a plurality of CNT structures in any manner in the presence of
“a catalytic metal layer” on a substrate, wherein the “catalytic metal layer” is
formed in any manner on “a non-catalytic metal layer” previously formed in
any manner on any manner of “substrate.” Spec. ¶¶ 008, 0017, 0018, 0020,
0023, 0025–0031, Figs. 1A–1D. We find that the language of claim 1 and
the disclosure in the Specification limits the manner in which the CNTs are
formed by reactions which occur in the presence of “a catalytic metal.”
Appellant discloses in the Specification that such reactions can be “any
suitable carbon nanotube formation technique including, but not limited to,
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chemical vapor deposition (CVD) techniques.” Spec. ¶ 0023. Appellant
defines the term “catalytic metal” as “any material that catalyzes the reaction
of the carbon containing feedstock to carbon nanotubes,” including metals
which “aid[] in the formation of carbon nanotubes structures on the
substrate,” and provides examples of such metals. Spec. ¶¶ 0030, 0031.
Appellant further defines the term “non-catalytic metal” as “any metal or
metal complex which has negligible catalytic activity toward CNT growth
when placed in the reaction chamber in the presence of the particular
reaction gases and under the particular reaction conditions,” wherein the
metal or metal complex “provide[s] negligible catalytic activity at the
substrate surface,” and provides examples of such metals. Spec. ¶¶ 0027,
0028.
The Specification is, of course, directed to one skilled in the art and is
subject to interpretation by one of ordinary skill in the art with respect to the
interpretation of claim terms. Indeed, skill, albeit at different levels, is
presumed for each of these “persons.” We find that, as Appellant contends,
even one of ordinary skill in the art can readily determine whether a metal or
metal complex catalyzes the formation of CNTs from particular reaction
gases at specific set of reaction parameters, or has “negligible catalytic
effect” on such formation as described in the Specification. We are not
convinced otherwise by the Examiner’s position that the Specification does
not establish a standard for “catalytic” and “negligible catalytic activity”
based on the disclosure that chromium (Cr) or an alloy thereof falls within “a
preferred embodiment” of “non-catalytic metal,” when taken in light of the
disclosure in Sun that Cr, alone and as an element in a complex, is among a
large number of metals and metal complexes that can catalyze the formation
of CNTs. Spec. ¶ 0028; Ans. 4–5 (citing Sun ¶ 0030). Indeed, the
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Examiner’s finding that Sun discloses that Cr or an alloy thereof can
catalyze the formation of CNTs under some process conditions does not
established that one of ordinary skill in the art would have been unable to
determine whether a metal or alloy thereof, including Cr, would have a
“negligible catalytic effect” on CNT formation under any and all of the
process conditions described by Appellant in the Specification and disclosed
by Sun. In other words, even if specific process conditions were identified
in the Specification and in Sun within which Cr or a metal complex
containing Cr provides more than “negligible catalytic activity,” such a
disclosure constitutes insufficient evidence to support the position that one
of ordinary skill in the art is unable to determine “negligible catalytic
activity” of a metal or alloy thereof in a process for forming CNTs
encompassed by claim 1 based on the disclosure in Appellant’s
Specification.
Accordingly, in the absence of a prima facie case, we reverse the
rejection of claims 1–16 under 35 U.S.C. § 112, second paragraph.
II. 35 U.S.C. § 103(a)
We first consider the rejection of claim 1 over the basic combination
of Sun and Ala-Kleme. We cannot agree with Appellant that the Examiner
erred in determining that the combined teachings of these references would
have led one of ordinary skill in the art to use Ala-Kleme’s method of
removing photoresist from a photolithographic process, which uses
ultrasonication in a bath followed by rinsing with water, in the reasonable
expectation of “get[ting] rid of the photo resist layer” as instructed by Sun in
a process for forming CNTs comprising the steps of, among other things,
forming a catalytic metal layer on a non-catalytic metal layer on a substrate,
thus arriving at a method falling within claim 1 including “subjecting the
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catalytic metal layer to ultrasonication and exposure to water.” Sun ¶¶ 0037,
0038, Figs. 3(a)–3(d), 4(a)–4(d); Ala-Kleme ¶ 0148. Ans. 5–7, 16–21; App.
Br. 14–22; Reply Br. 7–11.
On this record, we agree with the Examiner that one of ordinary skill
in the art would have routinely selected a known method for removing the
photoresist layer in following Sun’s “get rid of” instruction, and thus would
have reasonably combined Ala-Kleme’s ultrasonication process which
includes rinsing with water for this purpose, thus arriving at a method falling
within claim 1 without recourse to Appellant’s Specification. See, e.g., KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415–16 (2007) (“The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.”); In re Kahn, 441 F.3d 977,
985–88 (Fed. Cir. 2006); Sovish, 769 F.2d at 743 (skill is presumed on the
part of one of ordinary skill in the art); In re Keller, 642 F.2d 413, 425
(CCPA 1981) (“The test for obviousness is . . . what the combined teachings
of the references would have suggested to those of ordinary skill in the
art.”); 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) (“For
obviousness under § 103, all that is required is a reasonable expectation of
success.” (citations omitted)).
We are not convinced otherwise by Appellant’s contentions. App. Br.
14–22; Reply Br. 7–10. We disagree with Appellant’s position that
Ala-Kleme is non-analogous prior art which would not have been combined
with Sun. Indeed, as the Examiner points out, one of ordinary skill in the art
would have been led by Sun’s instruction to “get rid of the photo resist
layer” by seeking out suitable, known methods to do so, and would
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reasonably have selected Ala-Kleme’s method for that purpose even though
this reference is directed to a method of forming a different article than the
method of claim 1. Furthermore, contrary to Appellant’s contention, it is not
necessary that one of ordinary skill in the art must have combined Sun and
Ala-Kleme for the express purpose of removing the photoresist layer using
Ala-Kleme’s method to treat the catalytic metal layer using ultrasonication
and exposure to water in order to generate long CNTs as Appellant
discloses. Not only would one of ordinary skill in the art have used
Ala-Kleme’s method employing ultrasonication and exposure to water for
the express purpose of “get[ting] rid of the photo resist layer” as Sun
instructed, which is not Appellant’s sole purpose, see, e.g., Alcon Research,
Ltd. v Apotex Inc., 687 F.3d 1362, 1368 (Fed. Cir. 2012) (citing KSR, 550
U.S. at 406, 420; Translogic, 504 F.3d at 1259; In re Kemps, 97 F.3d 1427,
1430 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992);
In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc), but one of
ordinary would have done so even though unaware of the beneficial result
disclosed by Appellant. See, e.g., In re Spada, 911 F.2d 705, 707 (Fed. Cir.
1990); In re Woodruff, 919 F.2d 1575, 1577 (Fed. Cir. 1990); W.L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed. Cir. 1983) (“[I]t is .
. . irrelevant that those using the invention may not have appreciated the
results[,] . . . [otherwise] it would be possible to obtain a patent for an old
and unchanged process.” (citations omitted)).
Accordingly, we affirm the ground of rejection of claims 1, 2, 7,
10–14, and 16 over Sun and Ala-Kleme under 35 U.S.C. § 103(a).
Appellant relies on the same position with respect to the grounds of rejection
of claim 3 over Sun, Ala-Kleme, and Chung and of claims 7–9 over Sun,
Ala-Kleme, and Chih under 35 U.S.C. § 103(a), and thus we affirm these
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grounds as well. App. Br. 41–42.
Turning now to the grounds of rejection of claim 1 over Sun and Lo
and over Sun and Asakawa, we cannot agree with Appellant that the
Examiner erred in determining that the combined teachings of each set of
references would have led one of ordinary skill in the art to use Lo’s and
Asakawa’s methods of removing photoresist from a photolithographic
process, which use ultrasonication with exposure to water, in the reasonable
expectation of “get[ting] rid of the photo resist layer” as instructed by Sun in
a process for forming CNTs comprising the steps of, among other things,
forming a catalytic metal layer on a non-catalytic metal layer on a substrate,
thus arriving at methods falling within claim 1 including “subjecting the
catalytic metal layer to an ultrasonication and exposure to water.” Ans. 8–9,
11–12, 21–31; App. Br. 24–31, 33–41; Reply Br. 12–16, 17–21. Appellant
argues these grounds of rejections on essentially the same contentions we
considered above, and we remain of the same view in these respects that we
stated above.
Accordingly, we affirm the grounds of rejection of claims 1, 4–6, and
10–16 over Sun and Lo, and of claims 1, 5, and 10–16 over Sun and
Asakawa under 35 U.S.C. § 103(a).
We have affirmed the grounds of rejection of claims 1–16 under
35 U.S.C. § 103(a) and have reversed the ground of rejection of claims
1–16 under 35 U.S.C. § 112, second paragraph.
The Primary Examiner’s decision 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)(iv).
AFFIRMED

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