Ex Parte Yaniv

Patent Trial and Appeal Board

Apr 15, 2016

12564750 (P.T.A.B. Apr. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/564,750 0912212009
75589 7590 04/19/2016
Matheson Keys Daffer & Kordzik PLLC
7004 Bee Cave Rd.
Bldg. 1, Suite 110
Austin, TX 78746
FIRST NAMED INVENTOR
Zvi Yaniv
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
21545-156002 9045
EXAMINER
NGUYEN, BAO THUY L
ART UNIT PAPER NUMBER
1600
NOTIFICATION DATE DELIVERY MODE
04/19/2016 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):
kkordzik@mathesonkeys.com
claney@mathesonkeys.com
kdaffer@mathesonkeys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZVI Y ANIV
Appeal2013-004152 1
Application 12/564,750
Technology Center 1600
Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to a field
emission device that includes carbon nanotubes (CNTs) bound to a cathode
by way of biological complementary binding pairs, such as biotin-
streptavidin binding or DNA oligomer complementary binding. The
Examiner rejected the claims for anticipation and obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 "The real party in interest is Applied Nanotech Holdings, Inc., which is the
assignee of the entire right and interest in the present Application." App.
Br. 1 (Appeal Brief entered September 6, 2012).
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Application 12/564,750
STATEMENT OF THE CASE
Appellant's invention "relates in general to carbon nanotubes, and in
particular, to the functionalization of carbon nanotubes." Spec. 1. The
Specification explains that "[c]arbon Nanotubes (CNTs) are used in their
electron emission mode for many applications. In some of these
applications, the CNTs are deposited on a substrate, resulting in the field
emission cathode. In their electron emission mode, the CNTs are operated at
high fields, and their adherence to the cathode substrate is very important."
Id.
The Specification discloses that both of the principal methods used in
the past to adhere CNTs to cathodes, chemical vapor deposition and
ink/paste application, had certain drawbacks. Id. In Appellant's invention,
in contrast, the CNTs are adhered to the cathode substrate by placing one
partner of a biologically complementary binding pair on one end of a CNT,
and the complementary partner on the cathode substrate, and allowing the
partners to bind to each other. See id. at 4--5. The Specification discloses
that biotin-streptavidin binding or DNA oligomer complementary binding
may be used to adhere the CNTs to the cathode substrate. Id.
The Specification discloses that, by using such strongly binding
partners to attach only one end of the CNTs to the cathode substrate, "when
they bend in the field they are substantially the same length, achieving in
such a way a very uniform electron emission pattern, and as a result light
emission uniformity from the anode." Id. at 3.
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Claims 10-14 and 17-24 stand rejected and appealed. Non-Final
Act. 1 (entered April 9, 2012); App. Br. 1. The following rejections are
before us for review:
(1) Claims 10, 11, 13, 17, 18, and 20, under 35 U.S.C. § 102(e) as
anticipated by McCall2 (Non-Final Act. 2-3);
(2) Claims 10, 11, 13, 14, 17, 18, 20, and 21, under 35 U.S.C.
§ 102(b) as anticipated by Hamers3 (Non-Final Act. 3--4);
(3) Claims 10-13, 17-20, 22, and 23, under 35 U.S.C. § 103(a) for
obviousness over Takai4 and McCall (Non-Final Act. 4--6); and
(4) Claims 10-14 and 17-24 under 35 U.S.C. § 103(a) for
obviousness over Takai and Hamers (Non-Final Act. 6-8). 5
Claims 10, 11, 13, 14, 17, and 18 illustrate the appealed subject matter
and read as follows (App. Br. 17):
10. A field emission device comprising a cathode comprising
a substrate with functionalized CNTs attached thereto by way
of biological complementar; binding pairs.
11. The field emission device as recited in claim 10, further
comprising an anode positioned a predetermined distance from
the cathode.
2 U.S. Patent Appl. Pub. No. 2006/0246438 Al (published Nov. 2, 2006).
3 U.S. Patent Appl. Pub. No. 2004/0235016 Al (published Nov. 25, 2004).
4 U.S. Patent Appl. Pub. No. 2003/0090190 Al (published May 15, 2003).
5 Although the Examiner did not include claim 24 in the initial list of claims
rejected for obviousness over Takai and Hamers (Non-Final Act. 6), the
Examiner explained where the features of claim 24 were found in the cited
references (id. at 8), and included claim 24 in the overall list of rejected
claims (id. at 1 ).
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Application 12/564,750
13. The field emission device as recited in claim 10, wherein
the biological complementary binding pairs comprise DNA.
14. The field emission device as recited in claim 10, wherein
the biological complementary binding pairs comprise biotin and
streptavidin.
1 7. A field emission device comprising a field emission
cathode comprising a first substrate with functionalized CNTs
attached thereto by way of biological complementary binding
pairs.
18. The field emission device as recited in claim 17, further
comprising a field emission anode positioned a predetermined
distance from the field emission cathode.
ANTICIPATION-MCCALL
The Examiner found that, as required by claims 10 and 1 7, McCall
discloses "electrodes comprising a substrate with functionalized CNTs
attached thereto by way of biological complementary binding pairs." Final
Act. 2 (citing McCall i-f 325). The Examiner noted in particular that
McCall's "biological binding pairs comprise DNA." Id. at 3 (citing McCall
,-r 325).
As to claim interpretation, the Examiner concluded that, "in light of
the [S]pecification, the terms 'cathode' and 'field emission cathode' are not
defined, and do not appear to impart any additional structural features or
limitations to the claim, and therefore appear to be an intended use of the
electrode." Id. at 2-3.
Appellant contends that the Examiner's interpretation of claims 10
and 17 is erroneous because the Examiner ignores the fact that the preambles
of those claims expressly recite a "field emission device." App. Br. 3--4, 6-
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7. Appellant contends also that the Examiner's interpretation of the claim
terms "field emission device," "cathode," and "anode" is unreasonably broad
because the Examiner did not properly interpret the claims in light of the
relevant disclosures in the Specification. App. Br. 3-7; Reply Br. 1-2.
The Examiner responds that the Specification "specifically discloses
that 'the CNTs are deposited on a substrate resulting in the field emission
cathode' (p. 1, lines 10-15 of the specification), as applicants themselves
have acknowledged in the appeal brief(see p. 5, lines 5-10)." Ans. 10. The
Examiner contends also that "the term 'cathode' is defined in the art as 'the
negatively charged electrode by which electrons enter an electrical device'.
Absent a source of electrons or a voltage or current source, as currently
recited in claims 10 and 17, a 'cathode' is an electrode." Ans. 10.
As stated in Jn re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability ....
i~\'.l.fter evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
Appellant's arguments do not persuade us that a preponderance of the
evidence fails to support the Examiner's prima facie case as to claims 10 and
1 7. In particular, Appellant does not persuade us that, in finding that claims
10 and 17 encompass the device described in McCall, the Examiner
interpreted claims 10 and 17 unreasonably broadly.
We acknowledge, as Appellant argues (App. Br. 3-7), that claims 10
and 17 both plainly recite "[a] field emission device" (id. at 17). We
acknowledge also that Appellant's Figure 6 is described as depicting "a field
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emission device." Spec. 2. We acknowledge, as noted above in our
summary of the Specification's disclosure, and as Appellant argues (App.
Br. 5), that the objective of Appellant's invention is improved electron
emission uniformity (see Spec. 3).
As our reviewing court has explained, however, "while 'the
specification [should be used] to interpret the meaning of a claim,' courts
must not 'import[ ] limitations from the specification into the claim.' ... [I]t
is improper to 'confin[ e] the claims to th[ e] embodiments' found in the
specification .... " In re Trans Texas Holdings Corp., 498 F.3d 1290, 1299
(Fed. Cir. 2007) (quoting Phillips, 415 F.3d at 1323 (citations omitted,
bracketed text in internal quotes in original).
Ultimately therefore, "absent claim language carrying a narrow
meaning, the PTO should only limit the claim based on the specification ...
when [it] expressly disclaims the broader definition." In re Bigio, 381 F.3d
1320, 1325 (Fed Cir. 2004); see also, In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994) ("Although an inventor is indeed free to define the specific
terms used to describe his or her invention, this must be done with
reasonable clarity, deliberateness, and precision.").
In the instant case, Appellant does not direct us to a specific definition
of the term "field emission device" or "cathode" in the Specification.
Accordingly, given the directives from Trans Texas, Bigio, and Paulsen, that
limitations should not be imported into the claims from the Specification,
absent specific claim language and an express disclaimer or definition of the
claim term at issue, Appellant does not persuade us that the interpretation of
"field emission device" is reasonably limited to the device shown in Figure
6, or a device having the elements depicted in that figure. Nor are we
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persuaded, for the same reasons, that the Examiner was unreasonable in
declining to limit the interpretation of "cathode" to the applications
described in the Specification.
Our reviewing court has noted also that, "during patent prosecution
when claims can be amended, ambiguities should be recognized, scope and
breadth of language explored, and clarification imposed." In re Zietz, 893
F.2d 319, 321 (Fed. Cir. 1989).
In the instant case, despite Appellant's assertion that a skilled artisan
would understand a field emission device to fundamentally include both a
cathode and an anode (App. Br. 7), Appellant does not direct us to a clear or
specific definition of "field emission device" on the current record
supporting that assertion. Although Appellant intimates that the discussion
in paragraph 3 of Takai suggests that a field emission device includes a
cathode, anode, and voltage source (App. Br. 3), Appellant does not state
affirmatively whether that disclosure in Takai presents an art-accepted
definition or characterization of the term.
The ambiguity in Appellant's proffered claim interpretation is
underscored by the fact that the claims themselves, under the doctrine of
claim differentiation, support the Examiner's contention that, given the
current record, the term "field emission device" as used in claims 10 and 17
encompasses devices that include only the cathode recited in those claims.
Specifically, despite Appellant's assertion that a field emission device as
recited necessarily includes both an anode and a cathode, claims 10 and 17
do not require the device to include an anode, and the allegedly required
anode first appears in dependent claims 11and18. See App. Br. 17.
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Appellant has not established that the doctrine of claim differentiation, or an
exception to it, does not apply to the interpretation of claims 10 and 17.
Appellant, moreover, does not explain clearly or specifically why the
device in McCall identified by the Examiner fails to include all features of
claims 10 and 17, even assuming for argument's sake that the device recited
in claims 10 and 1 7 necessarily includes the features shown in Appellant's
Figure 6. As the Examiner points out, and as required by each of claims 10
and 17, McCall describes CNTs attached to a substrate by way of
complementary DNA binding:
Using a mask, single-stranded DNA molecules (pre-
made, with thiol linker) are spotted on to the gold electrodes in
the desired locations. The mask is removed, and the chip is
dipped into MAAD (mercapto-acetic-acid dimer) to cover
remaining gold surfaces with a negatively charged self-
assembled monolayer. The carbon nanotubes are positioned
across the gold electrodes using hybridization between the
DNA on the modified nanotubes and their complementary DNA
molecules bound to the gold electrodes.
McCall i-f 325 (emphasis added).
Like the device shown in Appellant's Figure 6, in the embodiment
identified by the Examiner, the bound CNTs are disposed between two
electrodes, with an electrical current, that is electrons, passing from one
electrode to the other, through the CNTs. See McCall i-f 320 ("This
experiment demonstrates the use of DNA to precisely locate carbon
nanotubes between two gold electrodes, and to measure the current-voltage
properties of this completed, self-assembled circuit.") (emphasis added); id.
at i-f 327 ("Current-voltage curves for the two-electrode system spanned by a
nanotube or group of nanotubes are measured. The measurements are
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Application 12/564,750
repeated for the control where two electrodes are not spanned by a
nanotube. ").
As to one of the two electrodes of McCall's device being the cathode
required by claims 10 and 17, as noted above, the undisputed art-accepted
meaning of cathode advanced by the Examiner is the negatively charged
electrode by which electrons enter an electrical device. As noted, McCall
discloses applying a voltage to its device, thereby allowing an electrical
current to enter the device, passing electrons through the CNTs from one
electrode to the other. McCall i-fi-1 320, 327. Thus, we are not persuaded that
Appellant explains with adequate specificity which features of claims 10 and
17 are missing from the McCall's device.
In sum, for the reasons discussed, Appellant's arguments do not
persuade us that the Examiner interpreted claims 10 and 17 unreasonably
broadly, nor do Appellant's arguments persuade us that a preponderance of
the evidence fails to support the Examiner's prima facie case that McCall
describes a device having all of the features required by claims 10 and 17.
Accordingly, we affirm the Examiner's rejection of claims 10 and 17
as anticipated by McCall. Because they were not argued separately, claims
11, 13, 18, and 20 fall with claims 10 and 17. 37 C.F.R. § 41.37(c)(iv).
ANTICIPATION-HAMERS
The Examiner found that, as required by claims 10 and 1 7, Hamers
discloses "electrodes comprising a substrate with functionalized CNTs
attached thereto by way of biological complementary binding pairs." Final
Act. 3 (citing Hamers i-fi-f 15-17). The Examiner noted in particular that
Hamers discloses biological binding pairs which can be either DNA or biotin
and streptavidin. Id. at 4 (citing Hamers i-fi-1 20, 21 ).
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As with McCall, discussed above, the Examiner concluded that, "in
light of the [S]pecification, the terms 'cathode' and 'field emission cathode'
are not defined, and do not appear to impart any additional structural
features or limitations to the claim, and therefore appear to be an intended
use of the electrode." Id. at 3.
Appellant contends that Hamers does not disclose a field emission
device, and incorporates by reference the arguments made in traversal of the
Examiner's anticipation rejection over McCall. App. Br. 7-8.
For essentially the same reasons discussed above as to McCall,
Appellant's arguments do not persuade us that the Examiner interpreted
claims 10 and 17 unreasonably broadly, nor do Appellant's arguments
persuade us that a preponderance of the evidence fails to support the
Examiner's prima facie case that Hamers describes a device having all of the
features required by claims 10 and 1 7.
As noted above, given the directives from In re Trans Texas Holdings,
498 F.3d at 1299, In re Bigio, 381 F.3d at 1325, and In re Paulsen, 30 F.3d
1475, 1480, Appellant does not persuade us that the interpretation of "field
emission device" is reasonably limited to the device shown in Figure 6, or a
device having the elements depicted in that figure. Nor are we persuaded,
for the same reasons, that the Examiner was unreasonable in declining to
limit the interpretation of "cathode" to the applications described in the
Specification.
Appellant, moreover, does not explain clearly or specifically why the
device in Hamers identified by the Examiner fails to include all features of
claims 10 and 17, even assuming for argument's sake that the device recited
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in claims 10 and 1 7 necessarily includes the features shown in Appellant's
Figure 6.
As the Examiner points out, and as required by each of claims 10 and
17, Hamers describes a device including CNTs attached to a substrate by
way of biological complementary binding:
One embodiment of a bioswitch that acts as a
biomolecular sensor for detecting the presence of an analyte
may be constructed from two electrodes and a nanocylinder,
such as a nanotube. Specifically, the bioswitch includes: (a) a
first electrode having at least one biomolecule bound thereto;
(b) a second electrode having at least one biomolecule bound
thereto, wherein the first and second electrodes are separated
by a gap; (c) a nanocylinder having at least two biomolecules
bound thereto; and (d) a detector connected to the first and
second electrodes for measuring the impedance between the
first and second electrodes. In this configuration, the at least
one biomolecule bound to the first electrode and one of the at
least two biomolecules bound to the nanocylinder are capable
of binding the analyte between them and the at least one
biomolecule bound to the second electrode and the other of the
at least two biomolecules bound to the nanocylinder are capable
of binding the analyte between them, such that the nanocylinder
bridges the gap between the first and second electrodes and
modifies the electrical impedance (i.e. resistance, capacitance,
or inductance, or a combination thereof) between the first and
second electrodes.
Hamers i-f 15 (emphasis added).
Like the device shown in Appellant's Figure 6, in the device in
Hamers identified by the Examiner, the bound CNTs are disposed between
two electrodes, with an electrical current, that is electrons, passing from one
electrode to the other, through the CNTs. As to one of the two electrodes of
Hamers' s device being the cathode required by claims 10 and 17, as noted
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above, the undisputed art-accepted meaning of cathode advanced by the
Examiner is the negatively charged electrode by which electrons enter an
electrical device. As is evident, Hamers discloses applying a voltage to its
device, thereby allowing an electrical current to enter the device, passing
electrons through the CNTs from one electrode to the other. Thus, we are
not persuaded that Appellant explains with adequate specificity which
features of claims 10 and 17 are missing from the Hamers' s device.
In sum, for the reasons discussed, Appellant's arguments do not
persuade us that the Examiner interpreted claims 10 and 17 unreasonably
broadly, nor do Appellant's arguments persuade us that a preponderance of
the evidence fails to support the Examiner's prima facie case that Hamers
describes a device having all of the features required by claims 10 and 17.
Accordingly, we affirm the Examiner's rejection of claims 10 and 17
as anticipated by Hamers. Because they were not argued separately, claims
11, 13, 14, 18, 20, and 21 fall with claims 10 and 17. 37 C.F.R.
§ 41.37(c)(iv).
OBVIOUSNESS-TAKAI AND MCCALL
In rejecting claims 10-13, 17-20, 22, and 23, for obviousness over
Takai and McCall, the Examiner cited Takai as disclosing a field emission
device having all of the claimed features, including CNTs attached to a
cathode substrate, but conceded that Takai did not "specify that the
chemically treated carbon nanotubes are attached to the cathode by
biological complementary binding pairs." Non-Final Act. 5. To address that
deficiency, the Examiner cited McCall as disclosing the use of
complementarily hybridizing nucleic acid oligomers as a technique of
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binding CNTs to substrates in electronic devices, which "allows for
nanotubes to be directed toward specific locations." Id. (citing McCall i-f 8).
Based on the references' teachings, the Examiner concluded that an
ordinary artisan would have considered it obvious to "have utilized
biological complementary binding pairs such as the DNA-directed assembly
of McCall et al to attach the carbon nanotubes of Takai et al. to the substrate,
in order to provide a means for nanotubes to be directed toward specific
locations for attachment." Id.
We select claim 10 as representative of the rejected claims. 37 C.F.R.
§ 41.37(c)(iv).
Appellant's arguments do not persuade us that a preponderance of the
evidence fails to support the Examiner's prima facie case of obviousness as
to claim 1 0.
As required by claim 10, and as the Examiner found, Takai discloses
field emission devices with field emission cathodes composed of CNTs
bound to a substrate. Takai i-f 15 ("[T]he field emission display-device
comprises a first substrate, a first metal film on said first substrate; a
conductive polymer film on said first metal film, said conductive polymer
film including emitter tips comprising carbon nanotubes .... "); see also id.
at i-f 12 ("The carbon nanotubes may form the cathode or may be deposited
onto a substrate to form the cathode.").
As the Examiner found also, Takai discloses the desirability of
adhering the CNTs to specific desired locations on the substrate, in the form
of patterns. Id. at i-f 77 ("In addition to electrophoresis, other processes such
as screen printing can be used for creating the patterns. . . . In addition to
screen printing, the carbon nanotubes can be applied to a substrate by inkjet
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printing."); see also id. at il 81 ("In yet another method, fibril based inks can
be formulated for use in spray equipment. When combined with a masking
technology, spray painting of fibril based inks offers a suitable method for
depositing fibril ink patterns of either simple or complex designs.").
Although it might be true that Takai differs from claim 10 in that
Takai does not use complementary pair binding to attach its CNTs to its
substrates, McCall discloses that its technique of using biological
complementary pairs of DNA oligomers to adhere CNTs to substrates allows
placement of the CNTs at specific locations, as the Examiner found. McCall
i-f 7 ("The inventors have also developed a method for locating nanotubes to
specific targets. The inventors have also developed techniques which allow
DNA patterning on nanotubes as well as the creation of multiple layers of
nanoparticles on the surface of nanotubes."); id. at i-f 8 ("[T]he invention
provides a process whereby nanotubes may be directed to specific
locations.").
Given Takai's disclosure of the desirability of attaching the CNTs in
its field emissions devices to specific locations on substrates, and further
given McCall's disclosure that its technique of using biological
complementary pairs of DNA oligomers to adhere CNTs to substrates allows
placement of the CNTs at specific locations, the result desired by Takai, we
agree with the Examiner that an ordinary artisan would have been prompted
to prepare Takai's device using the attachment method described in McCall,
thereby producing the device recited in claim 10.
Given the discussed teachings, moreover, we are not persuaded that
Takai and McCall, taken together, would have failed to motivate an ordinary
artisan to prepare Takai's device using the attachment method described in
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McCall, thereby producing the device recited in claim 10, as Appellants
argue. App. Br. 8-9; Reply Br. 2-3. In addition, because the teachings
suggesting the claimed device are derived only from the cited prior art,
Appellant's arguments (App. Br. 8-11; Reply Br. 3--4) do not persuade that
the Examiner's conclusion of obviousness is based solely on improper
hindsight gleaned from Appellant's Specification.
As to Appellant's argument that McCall is not analogous art to the
claimed invention, which is field emission devices (Reply Br. 3), we first
note that this argument is improperly made for the first time in the Reply
Brief. See 37 C.F.R. § 41.41(b)(2). In any event, McCall discloses in its
background section that CNTs "have been proposed as new materials for
electron field emitters in panel displays." McCall i-f 3. Given this disclosure,
and given, as discussed above, that McCall is directed to attaching CNTs to
substrates for use in electronic devices, precisely the pursuit in Takai, we are
not persuaded that McCall is non-analogous art to the invention recited in
claim 10.
In sum, for the reasons discussed, Appellant's arguments do not
persuade us that a preponderance of the evidence fails to support the
Examiner's prima facie case of obviousness as to claim 10. Because
Appellant does not advance secondary evidence of nonobviousness to rebut
the Examiner's prima facie case, we affirm the Examiner's obviousness
rejection of claim 10 over Takai and McCall. Because they were not argued
separately, claims 11-13, 17-20, 22, and 23 fall with claim 10. 37 C.F.R.
§ 41.37(c)(iv).
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OBVIOUSNESS--'TAKAI AND HAMERS
In rejecting claims 10-14 and 17-24 for obviousness over Takai and
Hamers, the Examiner again cited Takai as disclosing a field emission
device having all of the claimed features, including CNTs attached to a
cathode substrate, and again conceded that Takai did not "specify that the
chemically treated carbon nanotubes are attached to the cathode by
biological complementary binding pairs." Non-Final Act. 6.
To address that deficiency, the Examiner cited Hamers as teaching
attachment of CNTs "through biomolecular interactions between
biomolecules on the nanocylinders and biomolecules bound to a surface"
which "allows for the controlled attachment of nanocylinders to the surface
and [is] therefore useful in a range of applications, such as electronic
devices." Id. (citing Hamers i-fi-17-13). The Examiner noted in particular
Hamers's teaching that the biological complementary binding technique
"allows for covalent linkages that are chemically and thermally stable, and ..
. minimize the disruption of the structure and electronic properties of the
nanocylinders (para. 0011, 0013)." Id.
Based on the references' teachings, the Examiner concluded:
[I]t would have been obvious to one of ordinary skill in
the art at the time of the invention to have utilized biological
complementary binding pairs to attach nanocylinders such as
the carbon nanotubes of Takai et al. to the cathode, in order to
allow for the controlled attachment of nanocylinders to the
surface, which would be useful in a range of applications, such
as electronic devices, by providing linkages that are chemically
and thermally stable and which would minimize the disruption
of the structure and electronic properties of the CNTs of Takai
et al.
Id. at 6-7.
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We select claim 10 as representative of the rejected claims. 37 C.F.R.
§ 41.37(c)(iv).
Appellant's arguments do not persuade us that a preponderance of the
evidence fails to support the Examiner's prima facie case of obviousness as
to claim 1 0.
As noted above, as required by claim 10, and as the Examiner found,
Takai discloses field emission devices with field emission cathodes
composed of CNTs bound to a substrate. Takai i-fi-f 12, 15. As the Examiner
found also, and as discussed above, Takai discloses the desirability of
adhering the CNTs to specific desired locations on the substrate, in the form
of patterns. Id. at i177, 81.
It might be true that Takai differs from claim 10 in that Takai does not
use biological complementary pair binding to attach its CNTs to its
substrates. As the Examiner found, however, Hamers discloses a number of
advantages of the technique of using biological complementary binding pairs
to adhere CNTs to substrates, including chemical and thermal stability, as
well as placement of the CNTs at specific locations for use in electronic
devices. Hamers i-f 11 ("In certain embodiments, the biomolecules are
covalently linked to the nanocylinder(s). This is advantageous because
covalent linkages make the nanocylinder-biomolecule adducts chemically
and thermally stable ... . ");see also id. at i-f 13:
The ability to control the placement of nanocylinders on a
substrate allows for the production of patterned surfaces where
the nanocylinders are laid out relative to one another in a
predetermined design. The patterned surfaces are useful for
many applications, including nanoelectronic circuits. In
addition, the controlled assembly of nanocylinders on surfaces
allows for the production of a variety of electronic devices and
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sensors, including devices constructed from assemblies of one
or more nanocylinders and one or more surfaces bound by
biomolecular interactions between complementary biomolecule
pairs.
Given Takai's disclosure of the desirability of attaching the CNTs in
its field emissions devices to specific locations on substrates, and further
given Hamers' s disclosure of the advantages of its technique, particularly the
placement of the CNTs at specific locations in a patterned arrangement,
precisely the result desired by Takai, we agree with the Examiner that an
ordinary artisan would have been prompted to prepare Takai' s device using
the attachment method described in Hamers, thereby producing the device
recited in claim 10.
Given the discussed teachings, moreover, we are not persuaded that
Takai and Hamers, taken together, would have failed to motivate an ordinary
artisan to prepare Takai's device using the attachment method described in
Hamers, thereby producing the device recited in claim 10, as Appellants
argue. App. Br. 11-12, 15-16; Reply Br. 2-3. In addition, because the
teachings suggesting the claimed device are derived only from the cited prior
art, Appellant's arguments (App. Br. 12-14; Reply Br. 3--4) do not persuade
that the Examiner's conclusion of obviousness is based solely on improper
hindsight gleaned from Appellant's Specification.
As to Appellant's argument that Hamers is not analogous art to the
claimed invention, which is field emission devices (Reply Br. 3), we first
note that this argument is improperly made for the first time in the Reply
Brief. See 37 C.F.R. § 41.41(b)(2). In any event, Hamers discloses in its
background section that "there has been a tremendous interest in the use of
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Application 12/564,750
carbon nanotubes and related nano-sized objects in electronic devices,field
emission sources, and chemical sensors." Hamers i-f 4 (emphasis added).
Given this disclosure, and given, as discussed above, that Hamers is directed
to attaching CNTs in patterned arrangements to substrates for use in
electronic devices, precisely the pursuit in Takai, we are not persuaded that
Hamers is non-analogous art to the invention recited in claim 10.
In sum, for the reasons discussed, Appellant's arguments do not
persuade us that a preponderance of the evidence fails to support the
Examiner's prima facie case of obviousness as to claim 10. Because
Appellant does not advance secondary evidence of nonobviousness to rebut
the Examiner's prima facie case, we affirm the Examiner's obviousness
rejection of claim 10 over Takai and Hamers. Because they were not argued
separately, claims 11-14 and 17-24 fall with claim 10. 37 C.F.R.
§ 41.37(c)(iv).
CONCLUSION
For the reasons discussed, we affirm the Examiner's rejection of
claims 10, 11, 13, 17, 18, and 20, under 35 U.S.C. § 102(e) as anticipated by
McCall.
For the reasons discussed, we also affirm the Examiner's rejection of
claims 10, 11, 13, 14, 17, 18, 20, and 21, under 35 U.S.C. § 102(b) as
anticipated by Hamers.
For the reasons discussed, we also affirm the Examiner's rejection of
claims 10-13, 17-20, 22, and 23, under 35 U.S.C. § 103(a) for obviousness
over Takai and McCall.
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Application 12/564,750
For the reasons discussed, we also affirm the Examiner's rejection of
claims 10-14 and 17-24 under 35 U.S.C. § 103(a) for obviousness over
Takai and Hamers.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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