Ex Parte Yagi et al

Board of Patent Appeals and Interferences

Mar 7, 2011

10485506 (B.P.A.I. Mar. 7, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/485,506 02/02/2004 Takao Yagi SON-2535 9714
23353 7590 03/08/2011
RADER FISHMAN & GRAUER PLLC
LION BUILDING
1233 20TH STREET N.W., SUITE 501
WASHINGTON, DC 20036
EXAMINER
ORLANDO, MICHAEL N
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
03/08/2011 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 TAKAO YAGI and TOSHIKI SHIMAMURA
________________

Appeal 2010-004288
Application 10/485,506
Technology Center 1700
________________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 69-91, the only claims pending in the
Application.3 We have jurisdiction under 35 U.S.C. § 6(b).

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 2010-004288
Application 10/485,506

We AFFIRM.
The invention is directed to a method of manufacturing an electron
emitting member. The Examiner maintains the following grounds of
rejection (App. Br. 9-11)4:
1. claims 69, 74, 75, 88, 89, and 91 under 35 U.S.C. § 102(e) as
anticipated by Chang5 (Ans. 3-4);
2. claims 69, 74, 75, 88, and 89 under 35 U.S.C. § 102(e) as
anticipated by Yaniv6 (Ans. 4);
3. claims 69, 74, 75, and 88-91 under 35 U.S.C. § 103(a) as
unpatentable over Bouchard7 in view of either Chang or Yaniv (Ans. 5-6);
4. claims 70-73 under 35 U.S.C. § 103(a) as unpatentable over
Bouchard in view of either Chang or Yaniv as applied to claim 69, and
further in view of Dimitrijevic8 (Ans. 6-7);
5. claims 76 and 78 under 35 U.S.C. § 103(a) as unpatentable over
Bouchard in view of either Chang or Yaniv as applied to claim 69, and
further in view of Mau9 (Ans. 7-9);
6. claim 76 under 35 U.S.C. § 103(a) as unpatentable over Yaniv
as applied to claim 69, and further in view of Mau (Ans. 9-10);
2 Final Office Action mailed Sep. 9, 2008 (“Final”).
3 Appeal Brief filed Jun. 3, 2009 (“App. Br.”).
4 The Examiner has withdrawn the final rejection of claim 74 under 35
U.S.C. § 112, first paragraph. (Examiner’s Answer mailed Aug. 28, 2009
(“Ans.”) 2.)
5 US 6,436,221 B1, issued Aug. 20, 2002.
6 US 2003/0092207 A1, pub. May 15, 2003.
7 US 2002/0074932 A1, pub. Jun. 20, 2002.
8 US 2001/0024078 A1, pub. Sep. 27, 2001.
9 WO 00/73203 A1, pub. Dec. 07, 2000.
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7. claim 77 under 35 U.S.C. § 103(a) as unpatentable over Yaniv
in view of Mau as applied to claim 76, and further in view of Jin10 (Ans. 10);
8. claims 79-82 and 85 under 35 U.S.C. § 103(a) as unpatentable
over Yaniv in view of Mau as applied to claim 76, and further in view of
Blanchet-Fincher11 (Ans. 11-12);
9. claims 83 and 84 under 35 U.S.C. § 103(a) as unpatentable over
Yaniv in view of Mau and Blanchet-Fincher as applied to claim 79, and
further in view of Kodas12 (Ans. 12); and
10. claims 86 and 87 under 35 U.S.C. § 103(a) as unpatentable over
Yaniv in view of Mau and Blanchet-Fincher as applied to claim 79, and
further in view of Jin (Ans. 13).
The issues raised by Appellants’ traversal of the above-listed grounds
of rejection may be summarized as follows:
Did the Examiner reversibly err in determining that (a) Yaniv and
Kodas are available as prior art for the subject matter relied upon in support
of the rejections; (b) the claim 69 steps of “forming a composite layer” and
“orienting” encompass the method steps performed by Chang and Yaniv to
form and realign carbon nanotubes; (c) claim 70 encompasses Dimitrijevic’s
DLC matrix; and (d) the combined teachings of the applied prior art disclose
or suggest all of the limitations of claims 76, 77, 79, and 86?
We answer each of these questions in the negative for the reasons set
forth in the Answer, which we discuss in further detail below.

10 US 6,250,984 B1, issued Jun. 26, 2001.
11 US 5,948,465, issued Sep. 07, 1999.
12 US 2006/0001726 A1, pub. Jan. 05, 2006.
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Grounds of Rejection 1-3
Appellants’ arguments with respect to grounds of rejection 1-3 are
limited to independent claim 69, which reads as follows:
69. A manufacturing method of an electron emitting member
comprising:
forming a cathode electrode on a supporting member;
forming a composite layer on said cathode electrode, carbon nanotube
structures of said composite layer being embedded within a matrix; and
thereafter,
orienting a top portion for each of the carbon nanotube structures
toward a direction normal to said supporting member.
(App. Br., Claims Appendix.)
Rejection under 35 U.S.C. § 102(e) as anticipated by Chang
The Examiner relies on Chang, cols. 2-4 (Final 3; Ans. 3), in
particular, col. 2, l. 50-col. 3, l. 3 (Ans. 14), for a disclosure of Appellants’
claim 69 method, including a step of forming a composite layer followed by
a step of orienting.
Appellants argue “Chang fails to disclose, teach, or suggest the step of
orienting a top portion for each of the carbon nanotube structures toward a
direction normal to said supporting member after the step of forming a
composite layer on an [sic] cathode electrode.” (App. Br. 15 (emphasis in
original); Rep. Br. 3.)
We have considered the scope of the aforementioned claim steps in
light of Appellants’ Specification, and are in agreement with the Examiner’s
determination that the steps of forming a composite layer and orienting read
on Chang’s disclosed steps of screen printing a carbon nanotube paste and
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vertically pulling up carbon nanotubes that are laying down (Final 3; Ans.
3). (Compare Spec. 42:29-45:15 with Chang, col. 2, l. 52-col. 3, l. 2.)
Because Appellants have not specifically explained, nor is it apparent to us,
why Appellants view the Examiner’s findings as erroneous or otherwise
insufficient to establish a prima facie case of anticipation, we are not
persuaded that reversal of this ground of rejection is warranted.
Rejection under 35 U.S.C. § 102(e) as anticipated by Yaniv
The Examiner relies on Yaniv, ¶¶ [0020-0042], for a disclosure of
Appellants’ claim 69 method. (Final 4; Ans. 4.)
Appellants contend the Examiner has not made sufficient findings to
establish that Yaniv is available as prior art for the subject matter relied upon
in support of the rejection, because the Examiner has not shown that Yaniv’s
Provisional Application 60/343,642 (“Yaniv priority application”) supports
this subject matter in compliance with 35 U.S.C. § 112, first paragraph.
(App. Br. 16-17.)
In response to Appellants’ contention, the Examiner references
Figures 3 and 6 of the Yaniv priority application. The Examiner finds, more
specifically, that these figures show “the formation of a cathode (the black
metal layer),” and “the formation of the composite CNT layer which is [a]
paste of nanotubes and glass frit,” as well as “applying an adhesive to the
structure to pull the nanotubes up vertically (normal).” (Ans. 14-15.) We
have reviewed Figures 3 and 6 of the Yaniv priority application, and are in
agreement with the Examiner’s finding that the claim 69 steps of forming a
composite layer and orienting, read on the process illustrated and described
in these Figures.
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Appellants, in their Reply Brief, dispute the Examiner’s finding that
Yaniv discloses the claim 69 steps of forming a composite layer and
orienting. (Rep. Br. 4-5.) However, as with their traversal of the rejection
based on Chang, Appellants have not specifically explained why they view
the Examiner’s findings as erroneous or otherwise insufficient to establish a
prima facie case of anticipation.
Rejection under 35 U.S.C. § 103(a) as unpatentable over
Bouchard in view of either Chang or Yaniv
Appellants argue Bouchard fails to teach or suggest a step of
“orienting a top portion for each of the carbon nanotube structures toward a
direction normal to said supporting member” after the step of forming a
composite layer on the cathode electrode. (App. Br. 19 (emphasis in
original).)
The Examiner does not disagree with Appellants’ assertion, but
reiterates that Chang and Yaniv are relied on for a teaching of the claim 69
step of orienting the carbon nanotubes. (Ans. 15.)
Because Appellants’ argument with respect to Bouchard does not
address the facts and reasons relied on by the Examiner in rejecting claim
69, it is unpersuasive of error in the Examiner’s obviousness determination.
Moreover, for the reasons explained above, Appellants have not persuaded
us of error in the Examiner’s findings that Chang and Yaniv disclose the
claim 69 step of orienting (see e.g. Rep. Br. 5). (See also, Ans. 15-16.)
Ground of Rejection 4
Appellants’ arguments with respect to ground of rejection 4 are
limited to dependent claim 70, which reads as follows:
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70. The manufacturing method of an electron emitting member
according to claim 69, wherein said matrix is an amorphous carbon.
(App. Br., Claims Appendix.)
The Examiner finds
Dimitrijevic et al. teach that the evaporation of carbon from
carbon nanotubes on the walls of a field emitter during
electron field emission can be prevented and electron
emission is enhanced by coating the carbon nanotubes with a
diamond-like amorphous carbon [(“DLC”)] after forming a
composite layer of carbon nanotubes in a binder matrix on a
substrate.

(Ans. 7.) The Examiner determines one of ordinary skill in the art would
have been motivated to coat the carbon nanotubes in Bouchard’s method
with a DLC matrix based on Dimitrijevic’s teaching. (Id.)
Appellants do not dispute the Examiner’s findings with respect to
Dimitrijevic. (See App. Br. 23-24.) Rather, Appellants argue “Dimitrijevic
fails to disclose, teach, or suggest a structure similar to the matrix (21) of
Figure 4A that is made of an amorphous carbon.” (App. Br. 25 (emphasis in
original).)
We have considered the scope of claim 70 in light of Appellants’
Specification, and are in agreement with the Examiner that claim 70 is not
limited to forming a matrix having the specific structure described in
connection with Appellants’ Figure 4A (see Spec. 15:4-19; 22:6-29; 42:8-
43:29 (describing the exemplary process of the Figures)), but broadly
encompasses a structure formed by the Examiner’s proposed combination of
Bouchard and Dimitrijevic. (See Ans. 17.)
Appellants also argue one of ordinary skill in the art would not have
been motivated to combine the teachings of Chang and Dimitrijevic because
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Chang teaches away from the use of an amorphous carbon. (App. Br. 22-
23.)
We are not persuaded that Chang’s disclosure amounts to a teaching
away for the reasons fully explained by the Examiner (Ans. 16-17.) See
Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1379-80 (Fed. Cir.
2005) (“A statement that a particular combination is not a preferred
embodiment does not teach away absent clear discouragement of that
combination.”); In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The
prior art's mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed in the
. . . application.”).
Grounds of Rejection 5 and 6
Appellants’ arguments with respect to grounds of rejection 5 and 6 are
directed to dependent claim 76.
The Examiner concedes that neither Bouchard, Yaniv, nor Chang
discloses the use of a mask as recited in claim 76. (Ans. 8-9.) However, the
Examiner finds that Mau discloses a process of preparing a patterned layer
of carbon nanotubes on a substrate which “comprises applying a photoresist
layer on the substrate, masking a region of the photoresist layer and
subjecting an unmasked portion to radiation and developing to leave another
portion on the substrate, then forming a layer of carbon nanotubes on the
substrate to provide a patterned layer” as required by claim 76. (Ans. 8-9.)
The Examiner determines “[i]t would have been obvious to merely substitute
the carbon nanotube deposition method[s] of . . . Bouchard[] and Yaniv
with the masking deposition method of [Mau] because such would have
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been expected to result in a layer with better resolution (a more refined
pattern).” (App. Br. 18-19.)
Appellants argue Mau fails to disclose or suggest forming the layer on
a cathode electrode. (App. Br. 27 (discussing ground of rejection 5); 30-32
(discussing ground of rejection 6).) However, as explained by the Examiner,
Bouchard, Chang, and Yaniv are relied on for disclosures of methods of
screen printing to form a patterned layer of carbon nanotubes on a cathode
electrode. (Ans. 3-5, and 8-9.)
Appellants have not disputed the Examiner’s finding that, at the time
of the invention, Mau’s method of forming a mask was merely a known
alternative to screen printing for applying carbon nanotubes to a substrate
(Ans. 17-18). (See Rep. Br. 7-8.) Nor have Appellants shown that it would
not have been within the level of skill of the ordinary artisan to use Mau’s
method to form a mask layer on a cathode electrode in Bouchard’s or
Yaniv’s methods. (Id.) Absent such arguments/evidence, we are not
persuaded of reversible error in the Examiner’s obviousness determination.
See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (“If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability. For the same reason, if a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”).
Grounds of Rejection 7 and 8
Appellants’ arguments with respect to grounds of rejection 7 and 8 are
directed to dependent claims 77 and 79, respectively, which depend from
claim 76.
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The Examiner finds Yaniv discloses spray-coating a carbon nanotube
mixture onto a substrate. (Ans. 10.) The Examiner relies on Jin for a
teaching that, at the time of Appellants’ invention, spin-coating was a known
alternative to spray-coating and, therefore, determines it would have been
obvious to have used a spin-coating technique as required by claim 77 to
apply the carbon nanotube mixture in Yaniv’s method. (Id.; see also, Ans.
19-20.)
The Examiner relies on Blanchet-Fincher for a teaching of “a method
of attaching carbon nanotubes to a substrate which can withstand and
maintain its integrity under the conditions of manufacturing into which the
emitter cathode is placed[,] compris[ing] applying the carbon nanotubes
dispersed in a solution of a metal compound in an organic solvent.” (Ans.
11; see also, Ans. 20.) The Examiner concludes it would have been obvious
to have modified the method of Yaniv and Mau by applying a dispersion of
carbon nanotube structures in a metal compound solution as required by
claim 79, based on the advantages disclosed in Blanchet-Fincher. (Id.)
Appellants essentially argue none of the references individually
disclose spin-coating a nanotube-containing emulsion or slurry onto a mask
layer as required by claim 77, or applying a dispersion of carbon nanotube
structures in a metal compound solution onto a mask layer as required by
claim 79. (App. Br. 32-37; Rep. Br. 8-10.)
Appellants’ arguments are unpersuasive because they fail to address
the facts and reasons relied on by the Examiner in rejecting the claims; in
other words, Appellants discuss the teachings of references individually,
rather then comment on the understanding of the ordinary artisan based on
the combined teachings of the references. (See Ans. 19-20; discussion of
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Grounds of Rejection 5 and 6 supra pp. 8-9.) Accordingly, we are not
persuaded that reversal of grounds of rejection 7 and 8 is warranted.
Ground of Rejection 9
Appellants contend the Examiner has not made sufficient findings to
establish that Kodas is available as prior art for the subject matter relied
upon in support of the rejection of claims 83 and 84, because the Examiner
has not shown that the Provisional Application 60/327,620 (“Kodas priority
application”) supports this subject matter in compliance with 35 U.S.C.
§ 112, first paragraph. (App. Br. 37-39.)
In response to Appellants’ contention, the Examiner references page 6
and Table 1 of the Kodas priority application. (Ans. 21.) We are in
agreement with the Examiner’s finding that the referenced portions of the
Kodas priority application “teach that metal precursors capable of being
converted to form an elemental metal corresponding to the metal in the
metal precursor include organometallics, metal organics such as acetates or
trifluoroacetate (organic acid metal compounds) and inorganic compounds
such as metal nitrates, metal halides and other metal salts” (Ans. 12).
Accordingly, we are not persuaded the Examiner erred in concluding
[i]t would have been obvious to one of ordinary skill in the
art to have modified the method of the references as
combined by providing the metal compound which is
reduced to metal by heating as either an organometallic
(organometal) compound or organic acid metal compound, as
taught by Kodas et al, as alternative metal compounds to
metal salt that convert[s] to metal

(Ans. 12-13) to achieve the invention as recited in claims 83 and 84.

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Ground of Rejection 10
Appellants’ arguments are limited to claim 86, which depends from
claim 79, and requires that the “matrix is constituted of an electrically
conductive metal oxide.”
The Examiner determines
[i]t would have been obvious to one of ordinary skill in the
art at the time of the invention to have modified the method
of [Yaniv, Mau and Blanchet-Fincher] as combined by
providing the metal compound solution as one which
provides a conductive ceramic, as taught by Jin et al., as an
alternative to metal as conductive material for the conductive
matrix of a carbon nanotube emitter.

(Ans. 13.)
Appellants argue “Jin fails to disclose, teach, or suggest the nanotube
aggregate 30 being a matrix constituted of an electrically conductive metal
oxide.” (App. Br. 41 (emphasis in original).)
We are in agreement with the Examiner that Appellants’ argument is
not supported by Jin, which clearly teaches conductive ceramics are suitable
for use as a conductive matrix for a carbon nanotube emitter, identifying Y-
Ba-Cu-O as an exemplary metal-like ceramic powder (Jin, col. 5, l. 62-col.
6, l. 21). (Ans. 21.) Further, Appellants have not refuted the Examiner’s
finding that the claimed electrically conductive metal oxide is a type of
conductive ceramic and it would have been within the level of skill of the
ordinary artisan to have selected such metal oxide from Jin’s general
teaching of using conductive ceramics (Ans. 21). (See Rep. Br. 12-14.) As
such, we are not persuaded of reversible error in the Examiner’s obviousness
determination.
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In conclusion, for the reasons stated in the Answer and above, we are
not persuaded of reversible error in the Examiner’s rejections of claims 69-
91. Accordingly, we sustain all ten grounds of rejection.

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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RADER FISHMAN & GRAUER PLLC
LION BUILDING
1233 20TH STREET N.W., SUITE 501
WASHINGTON, DC 20036
13