Ex Parte Ryu et al

Patent Trial and Appeal Board

Sep 20, 2012

10551484 (P.T.A.B. Sep. 20, 2012)

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.
10/551,484 01/04/2007 Beyong-Hwan Ryu 930086-2015 4123
7590 09/20/2012
Ronald R Santucci
Frommer Lawrence & Haug
745 Fifth Avenue
New York, NY 10151
EXAMINER
HENDRICKSON, STUART L
ART UNIT PAPER NUMBER
1736
MAIL DATE DELIVERY MODE
09/20/2012 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 BEYONG-HWAN RYU, KI-JEONG KONG,
HYUN-JU CHANG, YOUNG-MIN CHOI, JAE-DO LEE,
HA-KYUN JUNG, CHANG-GYOUN KIM, and HAN-SUNG PARK
____________

Appeal 2011-009258
Application 10/551,484
Technology Center 1700
____________

Before PETER F. KRATZ, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/551,484

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A. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1 and 3-11 as being unpatentable under
35 U.S.C. § 103(a) over Kawakami1. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.2
Appellants’ invention is directed to a method of preparing carbon
nanotubes from a liquid-phased hydrocarbon source, comprising heating and
pressurizing the source to critical temperature and pressure, reacting and
cooling the source in the presence of an metal acid salt autogenous seed
catalyst, wherein the acid salt is formed with acetic, hydrochloric, sulfuric,
or nitric acid. Spec. p. 1, ll. 5-12; and p. 5, l. 27 – p. 6, ll. 1-2.
Representative claim 1 reads as follows:
1. A method for preparing carbon nanotube from a liquid
phased-carbon source, wherein the method uses a liquid phased-
hydrocarbon based material as carbon source; and comprises the steps
of
heating and pressurizing said carbon source to the range of
critical temperature and critical pressure, and
reacting and cooling said carbon source in the presence of an
autogenous seed catalyst which is a metal-containing acid salt wherein
the acid is selected from the group consisting of acetic acid,
hydrochloric acid, sulfuric acid and nitric acid to induce the growth of
carbon nanotube.
Br. Claims Appendix.

1 US 7,001,581 B2, issued Feb. 21, 2006.
2 Our decision makes reference to Appellants’ Brief (Br.) filed December 20,
2010, and the Examiner’s Answer (Ans.) mailed February 16, 2011.
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Application 10/551,484

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We will sustain the rejection for the reasons expressed in the Answer
with the comments below added for emphasis.
Appellants argue all of the claims as a group for issues 1 and 2 below,
and separately argue claims 4 and 9-11 for issue 3. Br. 3-5. For purposes of
this appeal, we therefore select claim 1 to decide issues 1 and 2, and each of
dependent claims 4 and 9-11 to decide issue 3. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Issue 1
Appellants argue that Kawakami fails to teach “the use of an
autogenous seed catalyst”. Br. 3. In particular, Appellants argue that the
claims recite a limited group of metal containing acid salt catalysts, wherein
the acid anion portion of the salt is derived from acetic acid, hydrochloric
acid, sulfuric acid or nitric acid, that “must then also possess the property
that it is also an autogenous seed catalyst, i.e. it is a seed catalyst which is
spontaneously generated by controlling the heating rate and pressurizing the
liquid phase hydrocarbon based material”. Id. at 4 (emphasis in original).
This argument is not persuasive of reversible error. The Examiner
bears the initial burden of establishing a prima facie case of unpatentability.
“[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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The Examiner found that Kawakami’s transition metal acid salt is an
autogenous seed catalyst, based both on its structure and its function to
spontaneously initiate formation of carbon nanotubes when in contact with
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the supercritical fluid carbon source. Ans. 4. Thus, the Examiner has
provided a reasonable basis to believe that the prior art possesses the recited
autogenous seed catalyst function. Appellants have failed to provide any
scientific reasoning or evidence to question the Examiner’s conclusion. See
In re Best, 562 F.2d 1252, 1254-1255 (CCPA 1977) (“where the Patent
Office has reason to believe that a functional limitation asserted to be critical
for establishing novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the authority to require
the applicant to prove that the subject matter shown to be in the prior art
does not possess the characteristic relied on.”). Appellants argue however
that the Examiner “misinterprets the scope of catalysts used in appellants’
claimed process”. Br. 3. Nonetheless, the Examiner not only found that
Kawakami teaches transition metal acid salt catalysts, but also found that the
anion of the catalyst is not critical to the process as it burns off and “does not
form a role in the process”. Ans. 4. Appellants have not contested this
finding. Additionally, we note that Kawakami teaches that the transition
metal acid salt may be reused by dissolving the metal in an acid and
recovering the transition metal salt. Kawakami, col. 10, ll. 20-23. The acid
may be nitric, hydrochloric, sulfuric or hydrofluoric acid. Id. at col. 13, ll.
36-43.
Issue 2
Appellants next argue that Kawakami as a whole would have led one
of ordinary skill in the art away from Appellants’ use of autogenous seed
catalysts. Br. 4. Appellants argue that Kawakami was more concerned with
obtaining carbon nanotubes “under low pressure conditions of less than 50
MPa”, rather than selecting an autogenous seed catalyst. Id. Moreover,
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Appellants argue that Kawakami regulates the size of their carbon nanotubes
by the size of the catalyst particles used, not by the catalysts being
autogenous seed catalysts. Id. at 4-5.
“[I]n general, a reference will teach away if it suggests that the line of
development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.” In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994). The Examiner found, and we agree as indicated
above, that Kawakami does indeed teach an autogenous seed catalyst. Ans.
4. A reference that teaches a feature cannot also be said to teach away from
that feature. That Kawakami considers other process parameters in addition
to teaching use of an autogenous seed catalyst does not negate such a
teaching. Here, we note that the pressures used in Kawakami are within the
range used by Appellants.3 Moreover, the Examiner pointed out that
nanotube dimension is not claimed and is not relevant with regard to the
mechanism of nanotube growth. Id. We agree.
Issue 3
With regard to dependent claims 4, and 9-11, the Examiner
acknowledged that Kawakami does not teach the parameters recited in these
claims, but maintained that it would have been obvious for one of ordinary
skill to vary these parameters to optimize reaction time and throughput for
large-scale processing. Id. at 3. Appellants argue that Kawakami does not
recognize that the recited parameters are result effective variables. Br. 5.
We find no error with regard to the Examiner’s treatment of these
recited process parameters. Initially, Appellants present only conclusory

3 1 atm = 0.10132500 MPa; 400 atm = 40.5300 MPa.
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statements and have not argued with sufficient particularity the individually
recited process parameters. Nor have Appellants demonstrated why one of
ordinary skill in the art would not recognize the recited process parameters
were not result effective. With regard to claim 4, the Examiner found, and
Appellants do not dispute, that Kawakami’s concentrations of carbon source
and catalyst fall within the recited ranges. Further, claim 9 recites heating
and cooling rates within the range of from 0.01 to 50oC/min. Such a range is
extremely broad, covering very slow rates and very fast rates.4 The heating
and cooling ranges of claims 10 and 11, at between 1 to 30oC/min, are only
somewhat narrower. There is no dispute that Kawakami requires heating
and cooling, which would inherently occur at some rate likely within the
broadly claimed ranges. Changes in temperature are normally the type of
parameter routinely optimized and within the skill of the ordinary artisan.
See In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“Normally, it is to be
expected that a change in temperature, or in concentration, or both, would be
an unpatentable modification.”). Appellants provide no evidence indicating
that the heating or cooling rate is critical or produces unexpected results.

Having considered the totality of the record before us, we agree with
the Examiner’s ultimate conclusion of obviousness and sustain the
Examiner’s rejection of claims 1 and 3-11.

4 Kawakami discloses a temperature between 350 and 800 oC. Kawakami,
Abstract. Going to/from room temperature to this range would take a
minimum of about 6 minutes at 50oC/min and a maximum of over 55 days at
0.01oC/min.
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Conclusion
The decision of the Examiner 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).
AFFIRMED
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