Brigham Young University

Patent Trials and Appeals Board

Mar 20, 2020

13924154 - (D) (P.T.A.B. Mar. 20, 2020)

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.
13/924,154 06/21/2013 Robert Davis 1737-2-024 5427
147179 7590 03/20/2020
Ray Quinney & Nebeker
36 South State Street
Suite 1400
Salt Lake City, UT 84111
EXAMINER
MILLER, MICHAEL G
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
03/20/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patent@rqn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT DAVIS, RICHARD VANFLEET,
KYLE ZUFELT, and DAVID JENSEN
____________

Appeal 2019-004228
Application 13/924,154
Technology Center 1700
____________

Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 9 and 11–13 under 35 U.S.C. § 103 as
unpatentable over the combined prior art of Wood et al., (“Strength and
Mechanical Properties of Carbon Nanotube Templated Materials,” Bulletin
of the American Physical Society; vol. 54, No. 14, 2009), Bottcher et al.,
(“Growth of Novel Carbon Phases by Methane Infiltration of Free-Standing

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies BRIGHAM YOUNG UNIVERSITY as
the real party in interest (Appeal Br. 3).
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Single-Walled Carbon Nanotube Films,” Carbon, vol. 45, 2007), and Forest
et al. (US 2012/0302117 A1; published Nov. 29, 2012) (“Forest”).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 9 is illustrative of the subject matter on appeal (emphasis added
to highlight key disputed limitations):
9. A method for infiltrating carbon nanotubes, comprising:
providing a carbon nanotube structure that comprises
carbon nanotubes on a substrate; and
infiltrating the carbon nanotubes with an additional
amount of carbon, wherein the infiltrating comprises heating
the carbon nanotubes with ethylene gas and hydrogen gas
within a furnace, wherein the carbon nanotubes are heated to a
temperature between about 800 to 950 °C, wherein the
infiltrating strengthens the carbon nanotube structure such that
when the carbon nanotubes are removed from the furnace and
cooled, the carbon nanotubes do not delaminate from the
substrate.

Appellant’s arguments focus on independent claim 9 (see generally
Appeal Brief).

OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, we determine that Appellant has
not demonstrated reversible error in the Examiner’s rejections (e.g., see
generally Ans.). In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011)
(explaining the Board’s long-held practice of requiring Appellant(s) to
identify the alleged error in the Examiner’s rejection). We sustain the
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rejections for the reasons expressed by the Examiner in the Final Office
Action and the Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis 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., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellant argues that there is no motivation to combine Wood with
Bottcher (Appeal Br. generally). Appellant’s main contentions are that 1)
the prior art fails to teach or suggest the limitation of heating the nanotubes
with ethylene gas and hydrogen gas (Appeal Br. 9), (2) the prior art fails to
teach or suggest heating the carbon nanotubes to a temperature between 800
to 950°C (Appeal Br. 10), (3) the Examiner’s conclusion of obviousness is
in error because the Examiner has impermissibly combined the teachings of
Wood and Bottcher because, according to the Abelson Declaration2, the
Examiner has misread Bottcher and Bottcher teaches away from combining
its teaching with Wood (Appeal Br. 10–15).
Appellant’s arguments are not persuasive of reversible error for the
reasons presented by the Examiner (Ans. 3–10; no Reply Brief was filed).

2 Declaration by Dr. John R. Abelson, filed Feb. 6, 2018. The arguments in
the Appeal Brief generally follow those expressed in this Declaration.
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Appellant’s arguments and the Abelson Declaration opinion fail to consider
the applied prior art as a whole and the inferences that one of ordinary skill
in the art would have made therefrom. Appellant’s arguments also fail to
take into account the breadth of claim 1. Notably, claim 1 uses the open
language “comprising” and does not preclude the use of additional gases, or
additional steps. Claim 1 does not require any minimum (or maximum)
amount of hydrogen gas, or any particular amounts of any specific gas.
There is no dispute that both Wood and Bottcher are directed to
infiltrating carbon nanotubes with additional carbon via heating the carbon
nanotubes in the presence of gases (Appeal Br. 9; Final Act 4; Woods
Abstract, Slides 6–8; Bottcher Abstract, 1085–1086, 1095). There is no
dispute that Wood heats the nanotubes to a temperature of 900°C, and uses
ethylene gas and argon gas. There is no dispute that Bottcher teaches use of
hydrogen gas and methane gas in a process of infiltrating carbon nanotubes
with additional carbon (e.g., Ans. 10). As the Examiner notes, it is well
established that combining two compositions, each known to be useful for
the same purpose, is obvious (Ans. 6, citing In re Kerkhoven, 626 F.2d 846,
850 (CCPA 1980) (“It is [generally considered] prima facie obvious to
combine two compositions each of which is taught by the prior art to be
useful for the same purpose, in order to form a third composition which is to
be used for the very same purpose.”)).3

3 Whether the prior art teaches away from the claimed invention is a
question of fact, In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). It is
well established that a prior art reference must be considered in its entirety,
i.e., as a whole, when determining if it would lead one of ordinary skill in
the art away from the claimed invention. W.L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983). One of ordinary skill
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Accordingly, Appellant has not shown reversible error in the
Examiner’s determination that it would have been prima facie obvious to use
some hydrogen gas (or hydrogen/methane gas mixtures), as exemplified in
Bottcher, in the process of Wood. See also KSR, 550 U.S. at 417 (the
predictable use of known prior art elements or steps performing the same
functions they have been known to perform is normally obvious; the
combination of familiar elements/steps is likely to be obvious when it does
no more than yield predictable results); Ball Aerosol & Specialty Container,
Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the
flexible inquiry set forth by the Supreme Court, the PTO must take account
of the “inferences and creative steps,” as well as routine steps, that an
ordinary artisan would employ) (emphasis omitted). Appellant has not
shown adequate evidence commensurate in scope with the claims that the
use of any minimal amount of hydrogen with a minimal amount of methane
in combination with other gases, as encompassed by claim 9, yields any
unexpected results.4

in the art would have readily appreciated that hydrogen may be used as a gas
in a carbon infiltration process as exemplified in Bottcher. Cf. In re Susi,
440 F.2d 442, 446 n.3 (CCPA 1971) (Disclosed examples and preferred
embodiments do not constitute a teaching away from a broader disclosure or
non-preferred embodiments); Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d
1371, 1379–80 (Fed. Cir. 2005) (Even a “statement that a particular
combination is not a preferred embodiment does not teach away absent clear
discouragement of that combination.”).

4 It is well established that the burden of showing unexpected results rests on
the person who asserts them by establishing that the difference between the
claimed invention and the closest prior art was an unexpected
difference. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir.
1991); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The unexpected
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Likewise, any argument that may be considered as a lack of
motivation or reason to combine the cited art is also unpersuasive for the
reasons given above. That is, the arguments fail to account for “the
inferences and creative steps that a person of ordinary skill in the art would
employ.” See KSR, 550 U.S. at 418. Furthermore, the Supreme Court has
stated that it is error to “look only to the problem the patentee [or applicant]
was trying to solve.” KSR, 550 U.S. at 420; see also, In re Beattie, 974 F.2d
1309, 1312 (Fed. Cir. 1992) (“[T]he law does not require that the references
be combined for the reasons contemplated by the inventor.”); also In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Appellant’s contentions that the Examiner has failed to give proper
weight to the Abelson Declaration, which expresses an opinion on what
Bottcher teaches and suggests and which also de facto expresses an opinion
on the legal conclusion of obviousness, are not persuasive of reversible error
in the Examiner’s rejection. There is no dispute that Bottcher teaches the
use of hydrogen gas for a process similar to Wood’s process. For all the
reasons explained by the Examiner and above, we do not find the
Declaration opinion persuasive of reversible error. Cf. Velander v. Garner,
348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior
publications than to subsequent conclusory statements by experts, the Board

results must be established by factual evidence, and attorney statements are
insufficient to establish unexpected results. See In re Geisler, 116 F.3d
1465, 1470-71 (Fed. Cir. 1997). Further, a showing of unexpected result
supported by factual evidence must be reasonably commensurate in scope
with the degree of protection sought by the claims on appeal. In re
Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983).

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acted well within [its] discretion.”); Yorkey v. Diab, 601 F.3d 1279, 1284
(Fed. Cir. 2010) (factfinder has discretion to give more weight to one item of
evidence over another “unless no reasonable trier of fact could have done
so”).
Appellant’s remarks with respect to dependent claims 11–13 do not
amount to separate arguments because they merely allege that the applied
prior art does not teach or suggest the claims’ limitations (Appeal Br. 16,
Ans. 11). As such, Appellant’s statements are considered to be nothing more
than general allegations of patentability and are not considered separate
patentability arguments. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”)
Accordingly, we sustain the Examiner’s rejection of all the claims on
appeal.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
9, 11–13 103 Wood, Bottcher,
Forest
9, 11–13

TIME PERIOD FOR RESPONSE
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)(iv).

AFFIRMED