Appeal 2007-2045
Application 10/204,670
emission properties. (Answer 4). The Examiner concedes that Shih does
not teach modifying the tips of the nanotubes, but contends that it would
have been obvious for one of ordinary skill in the art at the time the
invention was made to etch the tips of the nanotube array taught by Shih in
order to improve electron emissions of those tubes as taught by Rinzler.
(Answer 4).
Appellants contend that one of ordinary skill in the art would not have
been motivated to modify Shih in view of Rinzler because Shih’s nanotubes
are already open at the ends. (Reply Br. 3). Appellants thus dispute the
Examiner’s finding that Shih discloses nanotubes with closed ends, arguing
that Shih discloses only solid nanofibers or hollow, open-ended nanotubes.
(Reply Br. 3). As noted above, unsupported attorney argument alone (e.g.,
the explanation provided on page 3 of the Reply Brief) is insufficient to
overcome the Examiner’s prima facie showing that this feature is inherent in
Shih’s nanotubes given the similarity in Shih’s and Appellants’ processes.
See In re Best, 562 F.2d 1252, 1255-56, 195 USPQ 430, 433-34 (CCPA
1977) (“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.”). See also, Findings of Fact 7 & 8.
The Examiner relies on Rinzler and Hiura to establish that the claimed
oxygen to carbon ratio of the etched nanotubes in the tip area would have
been obvious because it is a result effective variable. (Answer 4).
Appellants argue that the Examiner has not established that oxygen to
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013