Ex Parte Tour et al

Board of Patent Appeals and Interferences

Jul 3, 2008

10738459 (B.P.A.I. Jul. 3, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES M. TOUR, JASON J. STEPHENSON,
TIMOTHY IMHOLT, CHRISTOPHER A. DYKE,
BORIS I. YAKOBSON, and JAMES A. ROBERTS
____________

Appeal 2008-2797
Application 10/738,459
Technology Center 1700
____________

Decided: July 3, 2008
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and PETER F. KRATZ,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's refusal to allow claims 1 through 27, all of the pending claims in
the above-identified application. We have jurisdiction pursuant to 35 U.S.C.
§ 6.
We AFFIRM.

Appeal 2008-2797
Application 10/738,459

STATEMENT OF THE CASE
The subject matter on appeal is directed to a method of crosslinking
carbon nanotubes (Spec. 3, para. 0007). This nanotube crosslinking method
involves exposing the nanotubes to microwave radiation (Spec. 3, para.
0008). Further details of the appealed subject matter are recited in
representative claims 1, 7, 8, 9, 10, 11, 12, 18, 19, 21, 22, 25, and 27
reproduced below:
1. A method of crosslinking carbon nanotubes comprising:

(1) providing carbon nanotubes; and

(2) irradiating said carbon nanotubes with microwaves to yield
a plurality of crosslinked carbon nanotubes.

7. The method of claim 1, wherein the plurality of crosslinked
carbon nanotubes comprises at least on junction formed via a
rearrangement of carbon atoms.

8. A method of crosslinking carbon nanotubes comprising:

(1) providing carbon nanotubes; and

(2) irradiating said_carbon nanotubes with microwaves to yield
a plurality of crosslinked carbon nanotubes;

wherein crosslinking is generated between the sidewalls
of adjacent carbon nanotubes.

9. The method of claim 8, wherein the carbon nanotubes are single-
wall carbon nanotubes.

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10. The method of claim 8, wherein the carbon nanotubers are
chemically functionalized prior to the steps of irradiating.

11. The method of claim 8, wherein the crosslinking comprises
covalent bonds.

12. The method of claim 11, wherein the covalent bonds are carbon-
carbon bonds.

18. The method of claim 8, wherein the plurality of crosslinked
carbon nanotubes comprises at least one junction formed via a
rearrangement of carbon atoms.

19. A method of crosslinking single-wall carbon nanotubes
comprising:

(1) providing single-wall carbon nanotubes; and

(2) irradiating said single-wall carbon nanotubes with microwaves to
yield a plurality of crosslinked single-wall carbon nanotubes;

wherein crosslinking is generated between the sidewalls of
adjacent single-wall carbon nanotubes; and

wherein the step of irradiating is carried out in an inert
environment selected from the group consisting of ultra-high vacuum,
high vacuum, inert gases, and combinations thereof.

21. The method of claim 19, wherein the crosslinking comprises
covalent bonds.

22. The method of claim 21, wherein the covalent bonds are carbon-
carbon bonds.

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25. The method of claim 19, wherein the microwave radiation is
generated by a magnetron with a power that ranges from about 1 W to about
10,000 W.

27. The method of claim 19, wherein the plurality of crosslinked
single-wall carbon nanotubes comprises at least one junction formed via a
rearrangement of carbon atoms.

As evidence of unpatentability of the appealed subject matter, the
Examiner has proffered the following prior art references:
Harutyunyan US 7,014,737 B2 Mar. 21, 2006
Fliflet et al. (Fliflet), “Application of Microwave Heating to Ceramic
Processing: Design and Initial Operation of a 2.45-GHz Single-Mode
Furnace,” IEEE Transactions on Plasma Science, Vol. 24, No. 3, pp. 1041-
1049 (June 1996).
Holzinger et al., (Holzinger), “Sidewall Functionalization of Carbon
Nanotubes,” Angew Chem. Int. Ed., Vol. 40, No. 21, pp. 4002-4005 (2001).
Tour et al (Tour ‘168), “Use of Microwaves to Crosslink Carbon
Nanotubes to Facilitate Modification.,” US Patent Application 10/738,168
(Filed Dec. 17, 2003).
Tour et al. (Tour ‘092), “Process and Apparatus for Microwave
Desorption of Elements of Species from Carbon Nanotubes,” US Patent
Application 10/764,092 (Filed Jan. 23, 2004).

The Examiner has rejected the claims on appeal based on the above
proffered evidence as follows1:

1 As is apparent from pages 3 and 4 of the Answer, the Examiner has
withdrawn the §§ 102(b) and 103(a) rejections based on WO 01/75903 and
KO 2002-0046342 set forth in the final Office action mailed March 14,
2007. As is also apparent from the final Office action mailed March 14,
2007, the Advisory Action mailed May 24, 2007 and pages 3 and 4 of the
Answer, the Examiner has maintained the provisional rejection of claims 1
through 27 under the judicially created doctrine of obviousness-type double
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1) Claims 1 through 4, 7 through 9, 11 through 15, 18, 19, 21
through 24, and 27 under 35 U.S.C. § 102(e) as anticipated by or, in the
alternative, under 35 U.S.C. § 103(a) as unpatentable over the disclosure of
Harutyunyan;
2) Claims 5, 6, 16, 17, 25, and 26 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Harutyunyan and Fliflet;
3) Claims 10 and 20 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Harutyaunyan and Holzinger.
4) Claims 1 through 27 provisionally under the judicially created
doctrine of obviousness-type double patenting as unpatentable over the
claims of Tour ‘168; and
5) Claims 1 through 27 provisionally under the judicially created
doctrine of obviousness-type double patenting as unpatentable over the
claims of Tour ‘092;

Appellants appeal from the Examiner’s decision rejecting the claims
on appeal under the judicially created doctrine of obviousness-type double
patenting, and 35 U.S.C. § 102(e) and § 103(a).

RELEVANT FACTUAL FINDINGS,

1. Harutyunyan teaches (col. 7, l. 62 to col. 8, l. 7) that:
[T]he localized heating is preferably induced by exposing the
crude reaction product comprising the carbon naotubes and the
patenting as unpatentable over the claims of copending Applications
10/764,092 and 10/738,168 filed Jan. 23, 2004 and Dec. 17, 2003,
respectively,
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residual catalyst particles to microwave radiation. Preferably,
the frequency of the microwave radiation is about 2.45 GHz
and its power is 150 W.
…It is also preferable thate there be a substantial difference
between the residual particles and the nanotubes or nanofibers
in their susceptibility to heating by exposure to electromagnetic
fields or radiation at the frequency selected….

2. Appellants do not challenge the Examiner’s finding that Harutyunyan
teaches at col. 8, ll. 21-24 employing “ultra-high vacuum, high vacuum,
inert gases, and combinations thereof” during the exposure of the crude
reaction product with microwave radiation. (Compare Ans. 8, 10, 12, with
App. Br. 5-19 and Reply Br. 5-11).
3. Harutyunyan teaches “a tuned TE103 single mode cavity driven by a 1.5
kW [150 W], 2.45 GH power supply” (col. 11, ll. 41-45).
4. Fliflet teaches a NRL 2.45 microwave furnace (heating) system
employing “the Cober S6F 2.45-GHz industrial magnetron-based
[microwave] source which can produce up to 6 kW of continuous wave
(CW) power” (pp. 1042-43).
5. Holzinger teaches that nanotubes are chemically functionalized after they
are purified (p. 4002).
6. Neither Harutyunyan nor Holzinger teaches that the chemical
functionalization of carbon nanotubes can be carried out in the presence of
Harutyunyan’s catalyst residue impurities. (See Hozinger and Harutyunyan
in their entirety).
7. Appellants do not challenge the Examiner’s determination that claims 1
through 27 are unpatentable over the claims of copending Applications
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10/764,092 and 10/738,168 filed Jan. 23, 2004 and Dec. 17, 2003,
respectively, (Compare Ans. 5-6, with App. Br. 5-26 and Rep. Br. 3-13).
PRINCIPLES OF LAW, ISSUES, AND ANALYSES

I. INHERENCY UNDER § 102 AND/OR 103

Under 35 U.S.C. § 102, anticipation is established only when a single
prior art reference discloses, either expressly or under the principle of
inherency, each and every element of a claimed invention. In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990). The predecessor to our reviewing court in In
re Best, 562 F.2d 1252, 1255 (CCPA 1977) provided a guideline for
resolving inherency as follows:
Where… the claimed and prior art products are identical or
substantially identical, or are produced by identical or
substantially identical process, the PTO can require an applicant
to prove that the prior products do not necessarily or inherently
possess the characteristics of his claimed product…[w]hether
the rejection is based on “inherency” under 35 U.S.C. § 102,
on “prima facie obviousness” under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same , and its fairness is
evidenced by the PTO’s inability to manufacture products or to
obtain and compare prior art products.

According to In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002):
Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed
limitation, it anticipates. … Inherency is not necessarily
coterminous with the knowledge of those of ordinary skill in
the art. Artisans of ordinary skill may not recognize the
inherent characteristics or functioning of the prior art.

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See also Schering Corp. v. Geneva Pharmaceuticals, 339 F.3d 1373,
(Fed. Cir. 2000)(rejecting the contention that inherent anticipation requires
that a person of ordinary skill in the art at the time would have to recognize
the inherent feature at issue).
Here, the Examiner takes the position that Harutyunyan necessarily or
inherently crosslinks its carbon nanotubes in the claimed manner since they,
like Appellants’ nanotubes, are exposed to microwave radiation under the
claimed conditions (Ans. 8-13). On the other hand, Appellants content that
Harutyunyan does not produce such crosslinking since “Harutyunyan is not
irradiating the carbon nanotubes” (e.g., App. Br. 6 and Reply. Br. 5). In
support of their contention, Appellants refer to Harutyunyan’s teachings
directed to localized heating of metal and/or catalyst residual impurities for
the purification purpose (id).
The dispositive question is, therefore, does Harutyunyan teach
exposing carbon nanotubes to the claimed microwave radiation under the
claimed conditions, thereby providing a reasonable basis for finding
inherency within the meaning of 35 U.S.C. § 102(e)/103 (a)? On this record,
we answer this question in the affirmative.
Although Harutyunyan does not mention that its carbon nanotubes are
crosslinked in the manner recited in claims 1, 7, 8, 11, 19, 21, 22, and 27, we
find that Harutyunyan teaches exposing both carbon nanotubes and residual
catalyst impurities to microwave radiation at the claimed frequency and
power in an inert environment under high vacuum to cause localized heating
of the metal or catalyst residue impurities as indicated supra (FF 1-2).
Because Harutyunyan’s nanotubes, like the claimed nanotubes, are exposed
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to the claimed microwave under the claimed conditions, we concur with the
Examiner’s finding that Harutyunyan’s carbon nanotubes are inherently or
necessarily crosslinked in the claimed manner. The burden, therefore, is
shifted to Appellants to show that the exposure of carbon nanotubes to
microwave radiation in the manner taught by Harutyunyan does not produce
the claimed crosslinking. However, Appellants have not carried their burden
of proof (App. Br. 5-19 and Reply Br. 5-11). Appellants have not proffered
any objective evidence to show that Harutyunyan’s carbon nanotubes are not
necessarily crosslinked in the manner claimed.
Accordingly, we affirm the Examiner’s decision rejecting claims 1
through 4, 7 through 9, 11 through 15, 18, 19, 21 through 24, and 27 under
35 U.S.C. § 102(e) as anticipated by or, in the alternative under 35 U.S.C. §
103(a) as unpatentable over, the disclosure of Harutyunyan.
II. OBVIOUSNESS
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations. Graham v.
John Deere Co., 383 U.S. 1, 17-18 (1966). “[A]nalysis [of whether the
subject matter of a claim would have been obvious] need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co., v. Teleflex,
Inc., 127 S. Ct. 1727, 1740-41 (2007); see also DyStar Textilfarben GmbH
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& Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir.
2006).

1. Claims 5, 6, 16, 17, 25, and 26 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Harutyunyan and Fliflet2

The disclosure of Harutyunyan is discussed above. As acknowledged
by the Examiner, Harutyunyan does not teach using a magnetron as its
microwave source (Ans. 4, 16, and 18). Appellants content that the applied
prior art do not provide any reason, suggestion or motivation to employ the
magnetron as the microwave source for Harutyunyan’s microwave heating
process.
The dispositive question is, therefore, whether one of ordinary skill in
the art would have been led to employ, inter alia, a magnetron as the
microwave source in Harutyunyan’s microwave heating process within the
meaning of 35 U.S.C. § 103(a)? On this record, we answer this question in
the affirmative.
As correctly found by the Examiner at pages 14, 16, and 18 of the
Answer:
Like Harutyunyan, Fliflet teaches microwave heating. Fliflet
teaches a NRL 2.45-GHz microwave furnace system wherein
the microwave source is a Cober S6F 2.45 GHz industrial
magnetron-based source which can produce up to 6 kW of
continuous wave (CW) power and the microwave cavity is a

2 Appellants argue the limitations recited in claims 5, 16, and 25 (App. Br.
24-26 and Reply Br. 11-13). Therefore, for purposes of this appeal, we
decide the propriety of the Examiner’s rejections based on these claims
alone consistent with 37 C.F.R. § 41.37(c)(1)(vii) (2005).

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TE103 rectangular wave guide mode (pages 1042-1043…)
[Emphasis original]. [FF 4].

Given the above teachings, we concur with the Examiner that one of
ordinary skill in the art would have been led to employ known microwave
generating devices useful for microwave heating, such as the magnetron
taught by Fliflet, in the microwave heating process of Halutyunyan, with a
reasonable expectation of successfully heating catalyst residue impurities in
the carbon nanotubes taught by Halutyunyan. KSR Int'l Co. v. Teleflex Inc.,
127 S. Ct. at 1740 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
(1976)) (“[W]hen a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.”); .
Accordingly, we affirm the Examiner’s decision rejecting claims 5, 6,
16, 17, 25, and 26 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Harutyunyan and Fliflet
2. Claims 10 and 20 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Harutyunyan and Holzinger
The dispositive question here is whether the Examiner has
demonstrated that one of ordinary skill in the art would have been led to
chemically functionalize Harutyunyan’s carbon nanotubes prior to the
removal of its catalyst residue impurities within the meaning of 35 U.S.C. §
103(a)? On this record, we answer this question in the negative.
As is apparent from page 4002 of Holzinger, nanotubes are
chemically functionalized after they are purified. (FF 5). There is no
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indication in either Harutyunyan or Holzinger that the chemical
functionalization of carbon nanotubes can be carried out in the presence of
Harutyunyan’s catalyst residue impurities. (FF 6). Therefore, we concur
with Appellants that the Examiner has not demonstrated that one of ordinary
skill in the art would have been led to chemically functionalize
Harutyunyan’s carbon nanotubes, prior to its catalyst residue impurity
purification step, within the meaning of 35 U.S.C. § 103.
Accordingly, we reverse the Examiner’s decision rejecting claims 10
and 20 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Harutyunyan and Holzinger.
III. OBVIOUSNESS-TYPE DOUBLE PATENTING
Appellants do not challenge the Examiner’s determination that claims
1 through 27 of the present application are unpatentable over the claims of
copending Applications 10/764,092 and 10/738,168 filed Jan. 23, 2004 and
Dec. 17, 2003, respectively. Accordingly, we summarily affirm the
Examiner’s decision provisionally rejecting claims 1 through 27 under the
judicially crated doctrine of obviousness-type double patenting as
unpatentable over the claims of copending Applications 10/764,092 and
10/738,168 filed Jan. 23, 2004 and Dec. 17, 2003, respectively.

ORDER
The decision of the Examiner is affirmed.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
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AFFIRMED

PL Initial:
sld

ROSS SPENCER GARSSON
400 NORTH ERVAY STREET
P.O. BOX 50784
DALLAS, TX 75201

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