Ex Parte Ryu et al

Patent Trial and Appeal BoardSep 20, 2012

10551484 (P.T.A.B. Sep. 20, 2012)

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. 10/551,484 01/04/2007 Beyong-Hwan Ryu 930086-2015 4123 7590 09/20/2012 Ronald R Santucci Frommer Lawrence & Haug 745 Fifth Avenue New York, NY 10151 EXAMINER HENDRICKSON, STUART L ART UNIT PAPER NUMBER 1736 MAIL DATE DELIVERY MODE 09/20/2012 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BEYONG-HWAN RYU, KI-JEONG KONG, HYUN-JU CHANG, YOUNG-MIN CHOI, JAE-DO LEE, HA-KYUN JUNG, CHANG-GYOUN KIM, and HAN-SUNG PARK ____________ Appeal 2011-009258 Application 10/551,484 Technology Center 1700 ____________ Before PETER F. KRATZ, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009258 Application 10/551,484 2 A. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1 and 3-11 as being unpatentable under 35 U.S.C. § 103(a) over Kawakami1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 Appellants’ invention is directed to a method of preparing carbon nanotubes from a liquid-phased hydrocarbon source, comprising heating and pressurizing the source to critical temperature and pressure, reacting and cooling the source in the presence of an metal acid salt autogenous seed catalyst, wherein the acid salt is formed with acetic, hydrochloric, sulfuric, or nitric acid. Spec. p. 1, ll. 5-12; and p. 5, l. 27 – p. 6, ll. 1-2. Representative claim 1 reads as follows: 1. A method for preparing carbon nanotube from a liquid phased-carbon source, wherein the method uses a liquid phased- hydrocarbon based material as carbon source; and comprises the steps of heating and pressurizing said carbon source to the range of critical temperature and critical pressure, and reacting and cooling said carbon source in the presence of an autogenous seed catalyst which is a metal-containing acid salt wherein the acid is selected from the group consisting of acetic acid, hydrochloric acid, sulfuric acid and nitric acid to induce the growth of carbon nanotube. Br. Claims Appendix. 1 US 7,001,581 B2, issued Feb. 21, 2006. 2 Our decision makes reference to Appellants’ Brief (Br.) filed December 20, 2010, and the Examiner’s Answer (Ans.) mailed February 16, 2011. Appeal 2011-009258 Application 10/551,484 3 We will sustain the rejection for the reasons expressed in the Answer with the comments below added for emphasis. Appellants argue all of the claims as a group for issues 1 and 2 below, and separately argue claims 4 and 9-11 for issue 3. Br. 3-5. For purposes of this appeal, we therefore select claim 1 to decide issues 1 and 2, and each of dependent claims 4 and 9-11 to decide issue 3. See 37 C.F.R. § 41.37(c)(1)(vii). Issue 1 Appellants argue that Kawakami fails to teach “the use of an autogenous seed catalyst”. Br. 3. In particular, Appellants argue that the claims recite a limited group of metal containing acid salt catalysts, wherein the acid anion portion of the salt is derived from acetic acid, hydrochloric acid, sulfuric acid or nitric acid, that “must then also possess the property that it is also an autogenous seed catalyst, i.e. it is a seed catalyst which is spontaneously generated by controlling the heating rate and pressurizing the liquid phase hydrocarbon based material”. Id. at 4 (emphasis in original). This argument is not persuasive of reversible error. The Examiner bears the initial burden of establishing a prima facie case of unpatentability. “[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 Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner found that Kawakami’s transition metal acid salt is an autogenous seed catalyst, based both on its structure and its function to spontaneously initiate formation of carbon nanotubes when in contact with Appeal 2011-009258 Application 10/551,484 4 the supercritical fluid carbon source. Ans. 4. Thus, the Examiner has provided a reasonable basis to believe that the prior art possesses the recited autogenous seed catalyst function. Appellants have failed to provide any scientific reasoning or evidence to question the Examiner’s conclusion. See In re Best, 562 F.2d 1252, 1254-1255 (CCPA 1977) (“where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.”). Appellants argue however that the Examiner “misinterprets the scope of catalysts used in appellants’ claimed process”. Br. 3. Nonetheless, the Examiner not only found that Kawakami teaches transition metal acid salt catalysts, but also found that the anion of the catalyst is not critical to the process as it burns off and “does not form a role in the process”. Ans. 4. Appellants have not contested this finding. Additionally, we note that Kawakami teaches that the transition metal acid salt may be reused by dissolving the metal in an acid and recovering the transition metal salt. Kawakami, col. 10, ll. 20-23. The acid may be nitric, hydrochloric, sulfuric or hydrofluoric acid. Id. at col. 13, ll. 36-43. Issue 2 Appellants next argue that Kawakami as a whole would have led one of ordinary skill in the art away from Appellants’ use of autogenous seed catalysts. Br. 4. Appellants argue that Kawakami was more concerned with obtaining carbon nanotubes “under low pressure conditions of less than 50 MPa”, rather than selecting an autogenous seed catalyst. Id. Moreover, Appeal 2011-009258 Application 10/551,484 5 Appellants argue that Kawakami regulates the size of their carbon nanotubes by the size of the catalyst particles used, not by the catalysts being autogenous seed catalysts. Id. at 4-5. “[I]n general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). The Examiner found, and we agree as indicated above, that Kawakami does indeed teach an autogenous seed catalyst. Ans. 4. A reference that teaches a feature cannot also be said to teach away from that feature. That Kawakami considers other process parameters in addition to teaching use of an autogenous seed catalyst does not negate such a teaching. Here, we note that the pressures used in Kawakami are within the range used by Appellants.3 Moreover, the Examiner pointed out that nanotube dimension is not claimed and is not relevant with regard to the mechanism of nanotube growth. Id. We agree. Issue 3 With regard to dependent claims 4, and 9-11, the Examiner acknowledged that Kawakami does not teach the parameters recited in these claims, but maintained that it would have been obvious for one of ordinary skill to vary these parameters to optimize reaction time and throughput for large-scale processing. Id. at 3. Appellants argue that Kawakami does not recognize that the recited parameters are result effective variables. Br. 5. We find no error with regard to the Examiner’s treatment of these recited process parameters. Initially, Appellants present only conclusory 3 1 atm = 0.10132500 MPa; 400 atm = 40.5300 MPa. Appeal 2011-009258 Application 10/551,484 6 statements and have not argued with sufficient particularity the individually recited process parameters. Nor have Appellants demonstrated why one of ordinary skill in the art would not recognize the recited process parameters were not result effective. With regard to claim 4, the Examiner found, and Appellants do not dispute, that Kawakami’s concentrations of carbon source and catalyst fall within the recited ranges. Further, claim 9 recites heating and cooling rates within the range of from 0.01 to 50oC/min. Such a range is extremely broad, covering very slow rates and very fast rates.4 The heating and cooling ranges of claims 10 and 11, at between 1 to 30oC/min, are only somewhat narrower. There is no dispute that Kawakami requires heating and cooling, which would inherently occur at some rate likely within the broadly claimed ranges. Changes in temperature are normally the type of parameter routinely optimized and within the skill of the ordinary artisan. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“Normally, it is to be expected that a change in temperature, or in concentration, or both, would be an unpatentable modification.”). Appellants provide no evidence indicating that the heating or cooling rate is critical or produces unexpected results. Having considered the totality of the record before us, we agree with the Examiner’s ultimate conclusion of obviousness and sustain the Examiner’s rejection of claims 1 and 3-11. 4 Kawakami discloses a temperature between 350 and 800 oC. Kawakami, Abstract. Going to/from room temperature to this range would take a minimum of about 6 minutes at 50oC/min and a maximum of over 55 days at 0.01oC/min. Appeal 2011-009258 Application 10/551,484 7 Conclusion The decision of the Examiner is affirmed. 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 bar