Ex Parte Shatwell

Board of Patent Appeals and Interferences

Aug 8, 2011

10504204 (B.P.A.I. Aug. 8, 2011)

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.
10/504,204 08/11/2004 Robert Alan Shatwell 04-639 8223
20306 7590 08/09/2011
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
TRAN, BINH X
ART UNIT PAPER NUMBER
1713
MAIL DATE DELIVERY MODE
08/09/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte ROBERT ALAN SHATWELL
________________

Appeal 2010-004127
Application 10/504,204
Technology Center 1700
________________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
CHUNG K. PAK, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Application 10/504,204
Appeal 2010-004127

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Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final
decision rejecting claims 1, 4-8, 10-11, 17-19, 21-22, and 26-28. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.

STATEMENT OF THE CASE
The subject matter on appeal is directed to a chemical vapor deposition
process for the production of carbon nanostructures, and an apparatus for use in
that process. Details of the appealed subject matter are recited in representative
claims 1,18, and 19 reproduced from the Claims Appendix to the Appeal Brief
(“App. Br.”) filed July 22, 2009, as shown below:
1. A process for growing carbon nanostructures, in which the
nanostructures are grown on a continuous, elongate, heated
catalytic substrate using chemical vapour deposition to form a
coated substrate, the process involving movement of the
continuous substrate through one or more deposition chambers,
wherein the carbon nanostructures are grown in a continuous or
semi-continuous manner, and wherein the deposited carbon
nanostructures are removed from the substrate in a further
continuous or semi-continuous step.
18. A process for growing carbon nanostructures, in which the
nanostructures are grown on a continuous, heated catalytic wire
substrate, in a continuous or semi-continuous manner, using
chemical vapour deposition to form a coated substrate, the
process involving:-
heating the wire substrate by passing an electric current
therethrough via at least two electrodes;
passing the heated wire substrate through at least one deposition
chamber containing gases which on contact with the heated
wire substrate deposit nanostructures; and, using removal
means, in a further continuous or semi-continuous step, to
Application 10/504,204
Appeal 2010-004127

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remove the deposited nanostructures, the second electrode
being positioned downstream of the removal means.
19. Apparatus for use in a process as claimed in claim 18,
comprising a reactor having at least one deposition chamber,
supply means for supplying gases to the deposition chamber,
support means for transferring the wire substrate through the
deposition chamber, at least two electrodes for supplying the
heating current to the wire substrate, and removal means for
removing the deposited nanostructures, wherein the second
electrode is disposed in the reactor downstream of the removal
means.1

Claims 18 and 19 contain means-plus-function elements pursuant to 35
U.S.C. § 112, 6th paragraph as indicated by Appellant at pages 6 and 7 of the
Appeal Brief. The claimed removal means recited in claims 18 and 19 corresponds
to either “a cone with a small hole at its apex,” “one or more rings or half-rings
(17) mounted or adjacent to the wire”, or a spiral through which the nanotube
containing wire passes, described at page 9, lines 12-21 of the Specification or
equivalents thereof. The support means for “transferring the wire substrate
through the deposition chamber” recited in claim 19 corresponds to spools (4) and
(14) located at the ends of the deposition chamber, with a variable speed motor

1 Prior to the issuance of the subject application, both the Examiner and Appellant
need to consider whether hybrid claim 19 meets the requirements of 35 U.S.C.
§ 112, second and forth paragraphs. See IPXL Holdings, L.L.C. v. Amazon.com,
Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (citing Ex parte Lyell, 17 U.S.P.Q.2d
1548 (B.P.A.I. 1990))(“[R]eciting both an apparatus and a method of using that
apparatus [in a single claim] renders [such] claim indefinite under section 112,
paragraph 2.”); see also Pfizer Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1292
(Fed. Cir. 2006)(when a claim relying on another claim “fails to ‘specify a further
limitation of the subject matter’ of the [another] claim to which it refers because it
is completely outside the scope of [the another claim,]” such claim is invalid under
35 U.S.C. § 112, fourth paragraph.)
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described at page 7, lines 25-27 and page 8, lines 12-14 of the Specification or
equivalents thereof.
As evidence of unpatentability of the claimed subject matter, the Examiner
relies on the following references at pages 2-3 of the Answer (“Ans.”) filed
October 29, 2009:
Tanemura et al. (M. Tanemura et al., Growth of Aligned Carbon
Nanotubes by Plasma-Enhanced Chemical Vapor Deposition:
Optimization of Growth Parameters, 90 J. APPLIED PHYSICS 1529
(2001)).
Noury et al. (Olivier Noury, Growth of Carbon Nanotubes on
Cylindrical Wires by Thermal Chemical Vapor Deposition, 346
CHEMICAL PHYSICS LETTERS 349 (2001)).
LePetitcorps 5,571,561 Nov. 5, 1996
Resasco 6,413,487 B1 July 2, 2002
Ohshima EP 0665187 A1 Aug. 2, 1995).

Appellant seeks review of the following grounds of rejection set forth in the
Answer:
1) Claims 1, 4-8, 10, 17-19, 21, and 27 under 35 U.S.C. § 103(a) as
unpatentable over Tanemura in view of LePetitcorps and Ohshima;
2) Claims 11 and 22 under 35 U.S.C. § 103(a) as unpatentable over
Tanemura, LePetitcorps and Ohshima as applied to claims 1,4-8, 10, 17-19, 21,
and 27 above, and further in view of Resasco;
3) Claims 1, 4-8, 10, 17-19, 21, and 26-28 under 35 U.S.C. § 103(a) as
unpatentable over Noury in view of LePetitcorps and Ohshima; and
4) Claims 11 and 22 under 35 U.S.C. § 103(a) as unpatentable over Noury,
LePetitcorps and Ohshima as applied to claims 1,4-8, 10, 17-19, 21, and 26-28
above, and further in view of Resasco.
Application 10/504,204
Appeal 2010-004127

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RELEVANT FACTUAL FINDINGS, PRINCIPLES OF LAW, ISSUE,
ANALYSIS, AND CONCLUSION
During examination, the Examiner bears the initial burden of establishing a
prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). To carry that burden, the Examiner relies separately upon two primary
references, Tanemura and Noury, for a chemical vapor deposition process for the
production of carbon nanostructures wherein the nanostructures are grown on a
continuous, elongate, heated catalytic substrate using chemical vapor deposition to
form a coated substrate in the presence of at least two electrodes. (See Ans. 3 and
6 (Discussing Tanemura); Ans. 7 and 10 (Discussing Noury).) The Examiner
relies upon LePetitcorps for the process involving the movement of the continuous
substrate through one or more deposition chambers via spools and a variable speed
motor in the presence of at least two electrodes (id. at 3-4, and 7-8), and upon
Ohshima for the removal of the nanostructures from the substrate in a continuous
step or semi-continuous step via removal means in the presence of a second
electrode downstream of the removal means (id. at 4, 6, 8, and 10). However,
Appellant contends that one of ordinary skill in the art would not have been led to
combine the disparate teachings of the prior art references relied upon in the
manner proposed by the Examiner to arrive at the subject matter recited in claims
1, 18 and 19. (See App. Br. 8-18.)
Therefore, the dispositive question is: Has the Examiner erred in
determining that one of ordinary skill in the art would have been led to combine
the disclosures of either Noury or Tanemura, LePetitcorps and Ohshima in the
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manner proposed by the Examiner to arrive at the invention recited in claims 1, 18,
and 192? On this record, we answer this question in the affirmative.
Under 35 U.S.C. § 103(a), “a patent composed of several elements is not
proved obvious merely by demonstrating that each of its elements was,
independently, known in the prior art.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 418-19 (2007). “‘[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
at 417-18, quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
As correctly argued by Appellants at pages 8 through 18 of the Appeal Brief,
the Examiner has not proffered sufficient factual underpinnings to support a
conclusion that one skilled in the art trying to improve the carbon nanotubes
growing process taught by either Tanemura or Noury, would look to the disclosure
of LePetitcorps involving the application of permanent coating materials to
continuous tungsten filaments to form reinforced tungsten composite wire
structures. (Compare Ans. 4, 7, 8, 12, and 14 with App. Br. 13-16.) LePetitcorps
pertains to a process for the permanent deposition of at least a titanium carbide
coating on a tungsten filament moving from a supply spool to a take-up spool
located at the ends of at least one deposition chamber to form a composite tungsten
wire material having at least the titanium carbide coating. (See App. Br. 9, 10, and
16; see also LePetitcorps Abstract, col. 1, ll. 9-37, and col. 3, ll. 19-46). Appellant
correctly states at page 16 of the Appeal Brief that “LePetitcorps . . . has no
bearing on the production of loose carbon nanostructures . . . (and that would

2 The rejections of dependent claims 11 and 22 under 35 U.S.C. § 103(a) are also
based on the assumption that the disclosures of either Noury or Tanemura,
LePetitcorps and Ohshima are combinable in the manner proposed by the
Examiner. (See Ans. 3-15.)
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clearly be contrary to the whole intent of that document).” Thus, on this record,
the Examiner has not shown that the tungsten wire reinforcement process and
apparatus having spools taught by LePetitcorps would be useful for the carbon
nanotubes growing process and apparatus of either Tanemura or Noury.
Nor has the Examiner shown that Ohshima remedies such deficiencies in
LePetitcorps. Appellant correctly states that Ohshima teaches employing an arc
discharge process for growing carbon nanostructures on a cathode and removing
them via a mechanical removing means. (See App. Br. 10 and 14 and Ohshima,
col. 1, ll. 1-30 and Figs. 1 and 4.) The Examiner has not shown that Ohshima
teaches or would have suggested that LePetitcorps’s tungsten wire reinforcement
process and apparatus involving the movement of the continuous tungsten filament
through one or more deposition chambers from a supply spool to a take-up spool
located at the ends of at least one deposition chamber would be useful for the
carbon nanotubes growing process of either Tanemura or Noury.
Accordingly, on this record, we concur with Appellant that the Examiner has
erred in determining that one of ordinary skill in the art would have been led to
combine the tungsten wire reinforcement process and apparatus taught by
LePetitcorps with the carbon nanostructure growing processes and apparatuses
taught or suggested by Tanemura, Noury and Ohshima in the manner proposed by
the Examiner to arrive at the claimed subject matter within the meaning of 35
U.S.C. § 103(a). See also, W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540,
1553 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) (“To imbue one of
ordinary skill in the art with knowledge of the invention . . ., when no prior art
reference or references of record convey or suggest that knowledge, is to fall
victim to the insidious effect of a hindsight syndrome wherein that which only the
invention taught is used against its teacher.”).
Application 10/504,204
Appeal 2010-004127

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ORDER
In view of the foregoing, it is
ORDERED that the decision of the Examiner to reject claims 1, 4-8, 10, 17-
19, 21, and 26-28 under 35 U.S.C. § 103(a) as unpatentable over either Tanemura
or Noury, in view of LePetitcorps and Ohshima is REVERSED; and
FURTHER ORDERED that the decision of the Examiner to reject claims 11
and 22 under 35 U.S.C. § 103(a) as unpatentable over either Tanemura or Noury in
view of LePetitcorps and Ohshima as applied to claims 1,4-8, 10, 17-19, 21, and
26-28 above, and further in view of Resasco is REVERSED.

REVERSED

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