Ex Parte Zhang et al

Board of Patent Appeals and Interferences

Jun 29, 2012

11521921 (B.P.A.I. Jun. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte XIAO-BO ZHANG, KAI-LI JIANG, and SHOU-SHAN FAN
____________

Appeal 2011-000781
Application 11/521,921
Technology Center 1700
____________

Before CHARLES F. WARREN, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2011-000781
Application 11/521,921

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DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1-4, 7, 8, 15-21, and 27-29 the only claims pending in the
Application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
1. claims 1-4, 7, 8, 15-20, and 27 are rejected as unpatentable over US
‘7063 in view of US ‘1084 and US ‘8895, and further in view of Tsunoda6 and
Bunshah7 (Ans.8 4-8);
2. claim 21 is rejected as unpatentable over US ‘108 in view of Hafner9
and US ‘889 (Ans. 9-10);
3. claims 28 and 29 are rejected as unpatentable over US ‘706 in view of
US ‘108 and US ‘889, and further in view of Tsunoda and Bunshah as applied to
claim 1, further in view of Lacerda10 (Ans. 10-11)

1 Final Office Action mailed Dec. 21, 2009.
2 Appeal Brief filed May 3, 2010 (“Br.”)
3 Dai, US 6,232,706 B1, issued May 15, 2001.
4 Jiang, US 7,045,108 B2, issued May 16, 2006.
5 Awano, US 7,311,889 B2, issued Dec. 25, 2007.
6 T. Tsunoda et al., Thermoelectric Properties of Ru- or Ge-doped B-FeSi2 Films
Prepared by Electron Beam Deposition, 381(2) Thin Solid Films 296-302 (2001).
7 Rointan F. Bunshah, Handbook of Deposition Technologies for Films and
Coatings: Science, Technology and Applications 643-680, 681-739, 763-821
(Noyes Pubs. 1994).
8 Examiner’s Answer mailed Jul. 6, 2010.
9 Jason H. Hafner et al., Catalytic Growth of Single-wall Carbon Nanotubes From
Metal Particles, 296 Chemical Physics Letters 195-202 (1998).
10 R. G. Lacerda et al., Growth of High-quality Single-wall Carbon Nanotubes
Without Amorphous Carbon Formation, 84(2) Applied Physics Letters 269-271
(2004).
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Appellants’ traversal of the Examiner’s rejections is based on limitations
found in the independent claims, i.e., claims 1 and 21, which are reproduced below
from the Claims Appendix to the Appeal Brief:
1. A method of fabricating a carbon nanotube array, comprising steps of:

providing a substrate having a flat and smooth surface;

depositing a catalyst layer on the surface of the substrate at a positive
deposition rate of less than 0.01 nanometers per second;

growing super-aligned carbon nanotubes directly from the catalyst layer,
such growing be achieved by a chemical vapor deposition process;

wherein the chemical vapor deposition process is conducted at a low
pressure in range from about 0.1 to about 10 torr and executed in a furnace; and the
chemical vapor deposition process comprises a step of supplying a reaction gas
into the furnace; and when supplying the reaction gas, no other gases are
introduced into the furnace; wherein the reaction gas is a pure hydrocarbon gas.

21. A method of fabricating a super-aligned carbon nanotube array, comprising
steps of:

providing a substrate having a surface;

depositing a catalyst layer on the surface of the substrate;

positioning the substrate with the catalyst in a furnace;

heating the furnace to a predetermined temperature;

supplying a reaction gas into the furnace, wherein the reaction gas is a pure
hydrocarbon gas.

growing a plurality of carbon nanotubes on the substrate such that the carbon
nanotube array is formed on the substrate, wherein the step of growing a plurality
of carbon nanotubes on the substrate is achieved by a chemical vapor deposition
process, the chemical vapor deposition process is conducted at a pressure in a
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range from about 0.1 to about 10 torr and at a temperature for growing carbon
nanotubes in a range from about 680°C to about 750°C.

Appellants’ arguments are based, in part, on a disagreement over the scope
and meaning of the phrase “wherein the reaction gas is a pure hydrocarbon gas”
(claims 1 and 21). Appellants contend this phrase is properly interpreted as
excluding from the chemical vapor deposition process gases other than a
hydrocarbon gas. (See e.g., Br. 11 (“US ‘108 only discloses how to manufacture a
clean carbon nanotube array under condition of a mixture of gas including carbon
containing gas and the protecting gas. . . . Thus, US ‘108 also fails to disclose or
suggest how to manufacture a clean carbon nanotube array under a condition
of a pure hydrocarbon gas in a pressure range from about 0.1 to about 10
torr.”) and 15 (“[T]the reaction gas of Hafner . . . is also actually a mixture of
C2H4, Ar and H2, not a pure hydrocarbon gas.”).)
During examination, claim terms must be given their broadest reasonable
interpretation consistent with the specification. In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). Non-conventional transitional phrases (i.e.,
other than “comprising,” “consisting essentially of,” and “consisting”) are
interpreted in light of the specification to determine whether open or closed claim
language is intended. See, e.g., AFG Indus., Inc. v. Cardinal IG Co., Inc., 239 F.3d
1239, 1244-45 (Fed. Cir. 2001) (interpreting “composed of” in same manner as
“consisting essentially of” based on specification and other evidence); Crystal
Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348
(Fed. Cir. 2001) (noting that the term “having” in transitional phrase “does not
create a presumption that the body of the claim is open”); Lampi Corp. v.
American Power Products, Inc., 228 F.3d 1365, 1376 (Fed. Cir. 2000) (interpreting
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“having” as open terminology, allowing the inclusion of other components in
addition to those recited).
Based on the Specification (e.g. Spec. 7:14-16 (“In the present embodiment,
the reaction gas can be a pure carbon source gas or a mixture of the carbon source
gas and less than about 5% of the protecting gas.”)), we interpret the phrase
“wherein the reaction gas is a pure hydrocarbon gas” as requiring the presence of a
hydrocarbon gas. However, the above-cited language in the Specification (as well
as the portions of the Specification cited by the Examiner (Ans. 15)) supports a
broad reading of the term “is” as open claim language encompassing a carbon
source gas together with a protecting gas (i.e., both alternatives listed for the
above-described embodiment). Further, while appealed claim 1 does further limit
the chemical vapor deposition process by the recitation “when supplying the
reaction gas, no other gases are introduced into the furnace” (claim 1), we still find
no basis in claims 1 and 21 for limiting the gases present in the reactant gas to a
hydrocarbon gas, e.g., the claim language does not preclude the presence of a
protecting gas or carrier gas.
Having interpreted the claim language in dispute, we now consider the
issues raised with respect to independent claims 1 and 21.
Claim 1:
The issues we consider with respect to claim 1 are: did the Examiner
reversibly err in finding the applied prior art discloses or suggests a deposition rate
of “less than 0.01 nanometers/s” and “the chemical vapor deposition process . . . at
a low pressure in [a] range from about 0.1 to about 10 torr” as claimed.
The Examiner relies on the combined teachings of US ‘108, which teaches
the use of electron beam vapor deposition for catalyst deposition, US ‘889 and
Tsunoda, which teach electron beam vapor deposition rates of .16 nm/s and .139
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nm/s, respectively, and Bunshah, which teaches the desirability of low deposition
rates for producing crystalline films critical to further growth of carbon nanotubes.
(Ans. 5 and 13-14.)
Appellants argue US ‘108, US ‘889, and Tsunoda fail to teach or suggest
deposition rates as low as those recited in claim 1. (Br. 7-9.) However, Appellants
have not fully addressed the Examiner’s detailed findings with respect to the
teachings of Bunshah (Ans. 13-14 (explaining why Bunshah would have led one of
ordinary skill in the art to utilize lower deposition rates than those taught in US
‘889 and Tsunoda; cf. Br. 9)) and, therefore, have not persuasively argued that the
Examiner erred in determining one of ordinary skill in the art would have been
motivated to modify the teachings of the applied prior art to employ a deposition
rate as claimed. (Cf. Ans. 12 (noting Appellants have not demonstrated any
criticality in the claimed range).)
Appellants argue the Examiner erred in finding the applied prior art
discloses or suggests conducting “the chemical vapor deposition process . . . at a
low pressure in [a] range from about 0.1 to about 10 torr” as claimed. (Br. 10-12.)
Appellants concede US ‘889 discloses using a pressure of 1-10 Torr, but argue the
reference only discloses this range as suitable for a mixture of gases, not a pure
hydrocarbon gas. (Br. 11.)
Appellants’ argument is unpersuasive for at least the following three
reasons. First, we have interpreted claim 1 as encompassing a chemical vapor
deposition process wherein the reaction gas includes a protecting gas such as the
hydrogen utilized in US ‘889. Second, a reasonable interpretation of US ‘889 is
that the reactive gas may be a hydrocarbon gas by itself, or in combination with
hydrogen or argon. (See col. 9, ll. 55-60 (“As carbon sources there may be
mentioned hydrocarbons such as methane, ethane, propane, butane, benzene,
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toluene, xylene, hexane, light oil or the like. The reactive gas used as the plasma
generating source may also be a mixture of these gases with hydrogen, or a mixture
containing a carrier such as argon.”).) Finally, as explained by the Examiner (Ans.
18), US ‘706 suggests turning off the argon supply while ethylene is flown through
the reactor during chemical vapor deposition, which meets the requirements of the
claim 1 supplying step even as narrowly interpreted by Appellants to preclude the
presence of gases other than a hydrocarbon gas.
Claim 21:
With respect to the rejection of claim 21, Appellants again argue the relied-
upon prior art fails to disclose or suggest the use of a reaction gas as claimed
because the reactant gases are a mixture of a hydrocarbon gas with argon and
hydrogen. This argument is not persuasive in light of our claim interpretation, as
explained in connection with the rejection of claim 1.
Appellants also argue one of ordinary skill in the art would not have been
motivated to modify US ‘108 to use a pure hydrocarbon gas such as C2H4 because
such substitution would result in a high partial pressure of the carbon containing
gas, which is contrary to US ‘108’s preference for a relatively low partial pressure.
(Br. 13-14.)
Appellants’ argument appears to misapprehend the Examiner’s rejection,
which relies on Hafner for a teaching of using C2H4 in combination with argon to
generate 0.5 torr of partial pressure, which the Examiner finds to be a relatively
low partial pressure (Ans. 16-17). Appellants have not shown error in the
Examiner’s finding that 0.5 torr partial pressure is sufficiently low that one of
ordinary skill in the art would not have been dissuaded from using Hafner’s
C2H4/Ar mixture in US ‘108’s deposition process and, in fact, would have been
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motivated to use this mixture “to allow bulk catalytic production of nano tubes by
metal catalysts (Abstract, Hafner)” (Ans. 9).
CONCLUSION
In sum, for the reasons expressed in the Answer and above, we are not
persuaded of error in the Examiner’s obviousness determination as to appealed
claims 1-4, 7, 8, 15-21, and 27-29. Accordingly, we sustain all three 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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