Appeal 2007-2045
Application 10/204,670
In our view, the facts and reasons presented in the Examiner’s Answer
provide a reasonable basis to conclude that the features of the claimed
carbon nanotube are inherent in Shih’s carbon nanotube. Thus, the burden
was properly shifted to Appellants to prove that the claimed subject matter is
patentably distinct. See In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d
1429, 1432 (Fed. Cir. 1997). Contrary to Appellants’ contention, merely
pointing out that the claimed nanotubes are formed using a thermal CVD
process and an anodic oxidation stopping layer while Shih employs ECR
CVD (Reply 2) is not sufficient to satisfy this burden. See In re Spada, 911
F.2d 705, 708-09, 15 USPQ2d 1655, 1657-58 (Fed. Cir. 1990) (“The Board
held that the compositions claimed by Spada ‘appear to be identical’ to those
described by Smith. While Spada criticizes the usage of the word ‘appear’,
we think that it was reasonable for the PTO to infer that the polymerization
by both Smith and Spada of identical monomers, employing the same or
similar polymerization techniques, would produce polymers having the
identical composition.”). In particular, Appellants have not provided a
convincing explanation as to why Shih’s ECR CVD process would not
produce the claimed carbon nanotube given the Examiner’s undisputed
finding that Shih uses process parameters and feed materials which are
similar to those of Appellants.1
In rejecting the claims, the Examiner further relies on Rinzler for a
teaching that oxidative etching of nanotube tips improves their current
1Shih suggests that an ECR CVD process is an improvement over a
conventional CVD process in that “a large amount of ion flux can pass
through the channels of the membrane, and nanosubstances can be
synthesized in the channels over a large area” (see Finding of Fact 3).
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