Ex Parte Roos

Patent Trial and Appeal Board

May 30, 2017

12747991 (P.T.A.B. May. 30, 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
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/747,991 08/18/2010 Aappo Roos 3505-1046 9943
466 7590 06/01/2017
YOUNG fr THOMPSON
EXAMINER
209 Madison Street MCCRACKEN, DANIEL
Suite 500
Alexandria, VA 22314 ART UNIT PAPER NUMBER
1736
NOTIFICATION DATE DELIVERY MODE
06/01/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AAPPO ROOS
Appeal 2015-004157
Application 12/747,991
Technology Center 1700
Before ROMULO H. DELMENDO, GEORGE C. BEST, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) the Examiner’s decision
finally rejecting claims 15, 17—22, and 30-36. An hearing was held on May
25, 2017.3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In this decision, we refer to the Final Office Action mailed April 29, 2014
(“Final Act.”), the Appeal Brief filed August 29, 2014 (“Appeal Br.”), the
Examiner’s Answer mailed December 22, 2014 (“Ans.”), and the Reply
Brief filed February 20, 2015 (“Reply Br.”).
2 Appellant identifies the real party in interest as Canatu Oy. Appeal Br. 1.
3 The record will include a transcript of the oral hearing when it becomes
available.
Appeal 2015-004157
Application 12/747,991
Claim 15, reproduced below, is illustrative of the claims on appeal.
15. A deposit of material, comprising:
carbon nanobud molecules bonded to each other via at
least one fullerene group to form a network of at least one of
electrically conductive or semiconductive paths, and a plurality
of the carbon nanobud molecules of the network are essentially
parallel aligned in relation to each other.
Appeal Br. 25 (Claims Appendix).
DISCUSSION
The Examiner maintains the rejection of claims 15, 17—22, and 30—36
under 35 U.S.C. 102(a) as anticipated by or, in the alternative, under
35 U.S.C. 103(a) as obvious over Kauppinen et al. (WO 2007/057501 Al,
published May 24, 2007). Final Act. 8—11; Ans. 2—5.
The Examiner finds that Kauppinen discloses a fullerene
functionalized carbon nanotube can be bonded through one or more
fullerenes and/or fullerene based molecules to one or more carbon nanotubes
and/or fullerene functionalized carbon nanotubes. Final Act. 8 (citing
Kauppinen 4:32—36). Because Kauppinen discloses that its carbon
nanotubes are connected to each other via at least one fullerene group, the
Examiner finds that that Kauppinen’s carbon nanotubes and fullerene groups
“form a network of at least one of electrically conductive or semiconductor
paths.” See Ans. 12, 19. In addition, the Examiner finds that Kauppinen’s
Figure 5 (middle depiction), reproduced below, depicts carbon nanobuds
“essentially parallel aligned in relation to each other.” Final Act. 8—9.
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Application 12/747,991
276 300 325 350 ' ‘60 600 650 700 750
Enerqv loss (eV)
Fig. 5
Figure 5 depicts Electron Energy Loss Spectroscopy (EELS) of different
parts of covalently bonded fullerene-fimctionalized carbon nanotubes
(CBFFCNTs) showing the presence of oxygen in the covalent bond between
the carbon nanotubes (CNTs) and fullerenes.
With respect to claim 36, the Examiner finds that the additional
claimed properties require specialized laboratory equipment to verify. Final
Act. 11. The Examiner finds that because the structure of claim 15, which is
also recited in claim 36, is taught by Kauppinen, it is also expected that the
properties are present. Id.
Appellant argues that Kauppinen does not disclose or suggest
fullerene functionalized carbon nanotubes forming “a network of at least one
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Application 12/747,991
of electrically conductive or semiconductive paths.” Appeal Br. 3, 7, and
20.
Appellant’s argument is not persuasive of reversible error in the
Examiner’s rejection. According to Appellant, “a network” is defined in
their Specification as a “form ... in which the [carbon nanobud] may be
randomly distributed or fully or partially aligned.” Appeal Br. 8 (emphasis
omitted); Spec. 4,11. 15—19.4 The portion of the Specification cited by
Appellant does not clearly set forth a definition of the term “network.”
Rather, it describes alternative, non-limiting embodiments of a network—
one in which molecules may be randomly distributed, one in which the
molecules are fully aligned, and one in which molecules are partially
aligned. Spec. 4,11. 15—19. As the Examiner points out, an ordinary and
customary definition of a “network,” is “a system of lines, wires, etc., that
are connected to each other.” Final Act. 6.5 The Examiner’s construction of
the term based on this definition is consistent with the description of a
“network” in Appellant’s Specification.
Kauppinen teaches one or more fullerenes and/or fullerene based
molecules can be covalently bonded to the outer surface and/or to the inner
surface of the carbon nanotube, preferably the outer surface. Kauppinen 4,
11. 1^4. Kauppinen teaches that the fullerene functionalized carbon nanotube
4 On page 8 of the Appeal Brief, Appellant’s cite page 5, lines 5—12 of their
Specification, however, the language quoted by Appellant actually appears
at page 4, lines 15—19 of the Specification filed June 14, 2010.
5 Although the Examiner refers to “http://www.merriam-
webster.com/dictionary/network” as the source of the definition of
“network,” the source of the definition relied upon by the Examiner is from
Merriam-Webster’s Learner’s Dictionary, which can be accessed at:
http://leamersdictionary.com/defmition/network.
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Appeal 2015-004157
Application 12/747,991
can be bonded through one or more fullerenes and/or fullerene based
molecules to one or more carbon nanotubes and/or fullerene functionalized
carbon nanotubes. Id. at 4,11. 32—36. For example, Kauppinen teaches that
two fullerene functionalized carbon nanotubes can be attached to each other
through a common fullerene molecule. Id. at 4,1. 36—5,1. 1. Thus,
Kauppinen teaches “carbon nanobud molecules bonded to each other via at
least one fullerene group.” In addition, Kauppinen teaches that both
fullerenes and carbon nanotubes exhibit unique and useful chemical and
physical properties related to, for example, electrical and thermal
conductivity and magnetic characteristics. Kauppinen 1,11. 11—15; see also
Spec. 2,1. 36—3,1. 7 (admitting that Kauppinen teaches carbon nanobud
molecules that possess electrical properties). Given that Kauppinen teaches
carbon nanobud molecules bonded to each other via at least one fullerene
group, and teaches carbon nanobud molecules possess electrical properties,
there is a reasonable basis for the Examiner’s finding that Kauppinen’s
carbon nanobud molecules would form a network of electrically conductive
or semiconductive paths.
Appellant contends that “[fjorming a network of electrically
conductive or semiconductive paths . . . would inhibit these functions of
[Kauppinen]” and thus would “teach away from the present invention.”
Appeal Br. 14.
Appellant’s contention is not persuasive of reversible error. Appellant
does not present specific arguments or identify evidence showing that
Kauppinen teaches away from (e.g., criticizes, discredits, or otherwise
discourages) forming a network of electrically conductive paths.
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Application 12/747,991
Appellant argues that Kauppinen does not teach “a plurality of the
carbon nanobud molecules of the network are essentially parallel aligned in
relation to each other.” Reply Br. 5. Specifically, Appellant argues that
Kauppinen’s Figure 5, which the Examiner finds depicts carbon nanobuds
“essentially parallel aligned in relation to each other,” depicts a single
nanostructure (one tube with stripes), not “molecules (plural) [(two aligned
tubes)] of a network that are parallel aligned.” Id. at 14.
This argument is not persuasive of reversible error in the Examiner’s
rejection. Claims 15 and 36 recite that the carbon nanobud molecules of the
network are “essentially parallel aligned,” not “parallel aligned” in relation
to each other, as Appellant argues. During prosecution, an applicant’s
claims are given their broadest reasonable scope consistent with the
specification. In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). The words used in a claim must be read in light of the
specification, as it would have been interpreted by one of ordinary skill in
the art at the time of the invention. Id. The Specification does not define the
phrase “essentially parallel.” The ordinary meaning of parallel is “extending
in the same direction, everywhere equidistant [], and not meeting.”
Merriam-Webster Online Dictionary, https://www.merriam-
webster.com/dictionary/parallel. Words of approximation, such as
“substantially,” “generally,” or “essentially” (as it is used here), are
commonly used in patent claims to avoid strict numerical boundary to
specific parameters. Anchor Wall Sys., Inc. v. Rockwood Retaining Walls,
Inc., 340 F.3d 1298, 1310-11 (Fed.Cir.2003). Accordingly, we conclude
that when given its broadest reasonable interpretation, the phrase
“essentially parallel” means something close to being parallel, but with some
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Application 12/747,991
deviation. See, e.g., id. at 1311 (finding the term “generally parallel”
definite; noting that the term “envision[s] some amount of deviation from
exactly parallel.”). Even if each “tube” depicted in Kauppinen’s Figure 5 is
a single nanostructure, as Appellant’s contend, Figure 5 depicts a network of
carbon nanobud molecules where a plurality of carbon nanobud molecules
(e.g., two tubes) of the network reasonably appear to be close to being
parallel, but with some deviation (i.e., “essentially parallel”). See
Kauppinen’s Fig. 5 (left depiction).
With respect to claim 36, Appellant argues that “there are
fundamental structural differences between the carbon nanotube network of
the present invention and the modified single nanotubes of [Kauppinen, and]
materials with different structures are expected to have different properties.”
Appeal Br. 19; see also id. at 21.
Appellant’s argument is not persuasive of reversible error in the
Examiner’s rejection. As discussed above, a preponderance of the evidence
supports the Examiner’s finding that Kauppinen discloses a carbon nanotube
network with the same structure recited in claim 15, which is also recited in
claim 36. Where, as here, the Examiner establishes a reasonable basis for
inherency and thereby evinces that Appellant’s and the prior art products
appear to be the same, the burden is properly shifted to Appellant to show
that they are not. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re
Best, 562 F.2d 1252, 125A-56 (CCPA 1977). Appellant has failed to show
by a preponderance of the evidence that Kauppinen’s carbon nanobud
network does not necessarily have the properties recited in claim 36.
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Application 12/747,991
Anticipation is the epitome or ultimate of obviousness. In re
Fracalossi, 681 F.2d 792, 794 (CCPA 1982). Thus, we affirm the
Examiner’s anticipation and obviousness rejections on the same basis.
In sum, upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence
supports the Examiner’s conclusion that the subject matter of claims 15, 17—
22, and 30—36 is either anticipated or obvious over Kauppinen.
Accordingly, we sustain the rejection.
DECISION
For the above reasons, the Examiner’s decision to reject claims 15,
17—22, and 30-36 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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