Ex Parte Yuge et al

Patent Trial and Appeal Board

Aug 10, 2017

12997325 (P.T.A.B. Aug. 10, 2017)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/997,325 12/10/2010 Ryota Yuge J-10-0538 5729
71799 7590 08/14/2017
Mr Tiro Hasihimntn
EXAMINER
2100 Pennsylvania Ave., NW
SUITE 800
MILLER, DANIEL H
Washington, DC 20037-3213 ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
08/14/2017 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):
necipca@necam.com
j iro. hashimoto @ necam. com
reiko.sasaki@necam.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYOTA YUGE,1
Sadanori Hattori, Masako Yudasaka, and Sumio Iijima
Appeal 2016-0018072
Application 12/997,325
Technology Center 1700
Before MARKNAGUMO, JAMES C. HOUSEL, and GEORGE C. BEST,
Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Ryota Yuge, Sadanori Hattori, Masako Yudasaka, and Sumio Iijima
(“Yuge”) timely appeals under 35 U.S.C. § 134(a) from a rejection of all
pending claims 1—14. We have jurisdiction. 35 U.S.C. § 6.
We AFFIRM.
1 The real party in interest is identified as NEC Corporation. (Appeal Brief,
filed 10 April 2015 (“Br. 2).
2 Heard 8 August 2017. The Official Transcript will be made of record in
due course.
Appeal 2016-001807
Application 12/997,325
OPINION
A. Introduction3
The subject matter on appeal relates to a nanotube-nanohom complex
said to be useful, inter alia, as a field emission light-emitting element.
(Spec. 3,11. 23—28; 11,11. 1—16.) Carbon nanotubes are said to have
favorable characteristics for such a use, including electrical conductivity, as
well as a high aspect ratio, chemical stability, and mechanical strength.
(Id. at 1,11. 11—12.) The ’325 Specification teaches, however, that “the
dispersibility of carbon nanotubes is so poor that homogeneous paste cannot
be obtained,” and “there has been a large problem in uniformity of the light
emission.” (Id. at 11. 20—22.)
Carbon nanohoms are said to be nanocarbon structures having a
diameter of 1 nm to 5 nm and a length of 30 nm to 200 nm. (Id. at 2,11. 3—
5.) The Specification reveals that they have a high conductivity because of
their tubular structure. (Id. at 2,11. 1—2.) Nanohoms are said to aggregate to
form complexes having a spherical stmcture (id. at 1. 3) between
30 to 150 nm in diameter (id. at 7,1. 11) with the tip of each hom being
directed to the outer sides of the aggregate (id. at 11. 10-11).4
3 Application 12/997,325, Nanotube-nanohorn complex and method of
manufacturing the same, filed 10 December 2010 as the national stage under
35 U.S.C. § 371 of PCT/JP2009/061555 06/18/2009, claiming the benefit of
an application filed in Japan on 30 June 2008. We refer to the
“’325 Specification,” which we cite as “Spec.”
4 The prior art (e.g., Iijima (n.9, infra), and Wang (n.12, infra)) disclose two
distinct types of nanohom aggregates, “dahlia-like,” which have an open
petal-like appearance, and “bud-like,” which have a more closed appearance.
The ’325 Specification does not use either term. Although the aggregates
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Application 12/997,325
Although nanohoms are said to be more dispersible than carbon
nanotubes, their relatively low aspect ratios are said to render them
unsuitable as field emission elements. {Id. at 11. 5—7.) The Specification
reports prior work teaching that “a carbon nanotube can grow from a catalyst
encapsulated in a carbon nanohom or supported in an outer wall of a carbon
nanohom by a chemical deposition method.” {Id. at 2,11. 8—10, citing Patent
Document 9* * 5 6.) However, the Specification teaches, in that approach, “the
size of the catalyst cannot uniformly be dispersed at a high level,” and “it is
difficult to grow carbon nanotubes controlled in diameter with high
dispersibility.” {Id. at 11. 11—13.)
The ’325 Specification reveals that these difficulties may be overcome
by forming apertures in the exposed parts of the nanohom, especially the
tips; introducing a catalyst particle into the apertures and exposing the
catalyst particle by removing the tip; and then growing carbon nanotubes
with controlled diameter from the catalyst particles. {Id. at 5,11. 20-30;
Figs 1 and 2.)
As shown in Figures 2A and 2B, reproduced on the following page,
the apertures 1016 may be formed by oxidation. {Id. at 6,11. 10-13.)
Catalyst particles 102 may be formed by sublimating various metals or by
drawn in Figures 1 and 2 look more dahlia-like, we assume, without
deciding, that either form can be used in the present invention.
5 Sumio Iijima et al, Carbon nanohorn-carried material and method for
synthesis of carbon nanotube, WO 2007/088829 Al (2007); the Japanese-
language original document is of record (filed 15 December 2010).
6 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
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Application 12/997,325
introducing them to nanohom aggregates dissolved in a solvent.
{Id. at 11. 24; Fig. 2B.)
{Figures 2A (left) and 2B (right) are reproduced below}
{Fig. 2A shows nanohoms 100 with {Figure 2B shows catalyst
apertures 101} particles 102 in apertures 101}
As shown in Figure 2C (not reproduced here), the catalyst particles
are then exposed by subjecting the material to heat treatment in air, resulting
in burning by catalytic action where the particles contact the carbon
nanohoms, i.e., the tips of the nanohoms are cut off at the dashed lines in
Figure 2B. The catalyst particles at the tips of the nanohoms then serve as
sites for growth of carbon nanotubes under chemical vapor deposition
conditions. {Id. at 7,11. 5—7; Fig. 2D, not reproduced here.)
Claim 1 is drawn to a nanotube-nanohom complex and reads:
A nanotube-nanohom complex comprising:
carbon nanohoms having a horn stmcture which forms a
spherical aggregate; and
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Application 12/997,325
catalyst fine particles supported within the carbon
nanohoms, wherein each of the carbon nanohoms
comprises an aperture formed therein,
each of the catalyst fine particles is fitted and fixed in the
aperture in a state in which part of the catalyst fine particle
is exposed to an exterior of the carbon nanohom by
introducing a catalyst fine particle thereof into the
carbon nanohom through the aperture, and
removing the carbon nanohom around a portion with
which the introduced catalyst fine particle or
precursor is brought into contact, and
carbon nanotubes with controlled diameter determined by
the diameter of sheaths of nanohoms are grown from the
catalyst fine particles.
(Claims App., Br. 14; some indentation, paragraphing, and emphasis added.)
Independent claim 2 is drawn to a somewhat more precisely defined
nanotube-nanohom complex.
Remaining independent claim 6 is drawn to a process of making a
nanotube-nanohom complex and reads:
A method of manufacturing a nanotube-nanohom complex,
the method comprising:
(a) forming an aperture in a carbon nanohom of carbon nanohoms
having a hom stmcture which forms a spherical aggregate;
(b) introducing a catalyst fine particle or a precursor thereof
into the carbon nanohom through the aperture;
(c) removing the carbon nanohom around a portion with which
the introduced catalyst fine particle or precursor is brought into
contact so as to expose part of the catalyst fine particle or the
precursor thereof to an exterior of the carbon nanohom; and
(d) growing a carbon nanotube with controlled diameter
determined by the diameter of sheaths of nanohoms from
the catalyst fine particle or the precursor thereof.
(Claims App., Br. 15—16.)
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Application 12/997,325
The Examiner maintains the following grounds of rejection:7,8
A. Claims 1—14 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Iijima ’096,9 Smalley,10 and
Wei.* 11
Al. Claims 1—14 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Iijima ’096, Smalley, Wei, and
Wang.12
B. Discussion
The Board’s findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Initially, we find that all of Yuge’s arguments for patentability are
focused on claim 1, with which all claims stand or fall.
37 C.F.R. § 41.37(c)(l)(iv) (2014).
The Examiner expresses the fundamental theory of obviousness in the
following words: “the final claimed product involves removal of the top of
the nanohom [disclosed by Iijima ’096] and replacing it with a catalyst
7 Examiner’s Answer mailed 28 September 2015 (“Ans.”).
8 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
9 Sumio Iijima et al., Carbon nanotube-carbon nanohorn complex and
method for producing the same, U.S. Patent No. 7,067,096 B2 (2006).
10 Richard E. Smalley et al., Method for producing a catalyst support and
compositions thereof U.S. Patent Application Publication 2008/0107586 Al
(2008).
11 Jeng-Hua Wei et al., Method for fabricating carbon nanotube device, U.S.
Patent Application Publication 2004/0043148 Al (2004).
12 H. Wang et al., Large-scale synthesis of single-walled carbon nanohorns
by submerged arc, 15 Nanotechnol. 546—550 (2004).
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Application 12/997,325
particle to grow a nanotube.” (FR. 3,11. 3 4.) More particularly, the
Examiner finds that Iijima ’096 “teaches [] novel spherical aggregates of
carbon nanohoms (and composites thereof with nanotubes . . .) and Smalley
teaches forming an aperture in the closed end nanotube (nanohom) and
etching back the carbon nanotube but not enough to etch away the nanotube
([0166 Smalley].” (FR 5,11. 7—11.) Thus, the Examiner finds that these
steps read on or render obvious step (a) of claim 6. The Examiner finds that
“Smalley teaches forming an aperture in the closed end (tip) nanotube
(nanohom) which is also considered to [] remove a portion by opening the
tip of the nanotube end cap and introducing a catalytic fine particle into or
through the opening, then growing a carbon nanotube from the end portion
catalytic active site.” (Id. at 4,11. 16—20, (citing Smalley [0162]—[0164] and
Example 7 (Smalley 24 [0296]—[0298]).) The Examiner finds that Wei
teaches that the diameter of the catalyst particle can dictate the size of the
nanotube grown from it, as required by claim 1. (FR 8,11. 4—5 (citing
Wei [0037]—[0042]).) On this basis, the Examiner concludes that steps (b),
(c), and (d), and the resulting nanotube-nanohom complex, would have been
obvious in view of these teachings. (FR 5,11. 12—15.) The Examiner also
finds that Wang discloses further advantages of carbon nanohoms, namely,
that their preparation does not require a catalyst and thus they can be
produced at high purity. (Id. at 9,11. 15—18.)
Yuge argues first that the Examiner erred because the claimed
invention requires carbon nanotubes grown from a carbon nanohom grow in
a radial fashion rather than from an aperture formed in the closed end of a
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Application 12/997,325
nanotube, as disclosed by Smalley. (Br. 6,11. 15—23; see also Reply13 4—5.)
Yuge urges further that the Examiner failed to establish a prima facie case of
obviousness because the Examiner finds, mistakenly, at page 4 of the Final
Rejection, “that a fullerene nanotube (i.e., nanotube) as disclosed by Smalley
is synonymous with a nanohom.” (Br. 7,11. 8—9.) Yuge further takes issue
with the Examiner’s determination “that Smalley would ‘render nanohoms
obvious because of its substantially identical cylindrical carbon structure.’”
{Id. at 11. 14—15 (quoting FR4,11. 13—14).)
The Examiner’s statements at page 4 read:
Further regarding at least independent claims 1 and 2,
Smalley . . . teaches a fullerene nanotube which is considered
a nanohom; or alternatively is considered to render
nanohoms obvious because of its substantially identical
cylindrical carbon stmcture including a closed cap end
(see [0022], example 7 and figures).
(FR 4,11. 11-15.)
Considered in the context of the Examiner’s fundamental theory of the
case, it is clear that the Examiner is equating the catalyst fme-particle capped
aperture in the nanohom with the catalyst fme-particle capped nanotube
disclosed by Smalley as being extendable by catalytic condensation of
carbon under appropriate conditions. Yuge’s attempt to shift our attention to
the differences between nanohoms and nanotubes is not well-taken,
particularly in the light of the disclosure in the Specification (Spec. 2,11. 8—
10) of Iijima’s report in Patent Document 9 of attempts to grow nanotubes
from catalyst particles deposited on nanohom aggregates. The subsequent
13 Reply Brief filed 30 November 2015 (“Reply”.)
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Application 12/997,325
disclosure by Smalley of ways to extend carbon nanotubes would have
prompted the use of similar catalyst particles to fill the apertures in nanohom
aggregates disclosed by Iijima ’096 and to then grow carbon nanotubes from
those catalyst-filled apertures.
Finally, we find that Yuge does not raise substantive arguments for
patentability based on secondary considerations such as unexpected results.
We are not persuaded of harmful error in the Examiner’s conclusion
of obviousness.
C. Order
It is ORDERED that the rejection of claims 1—14 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).
AFFIRMED
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