Appeal 2007-1893
Application 10/946,753
this determination, we apply a standard of reasonableness, with due regard
for the nature of the invention and the state of the art. Id. (internal citations
and quotation marks omitted).
Even assuming, without deciding, that it would be impossible to
control the orientation of the respective nanotubes that are disposed on
opposite sides of the aperture such that they meet within the aperture absent
some directed growth mechanism as Appellants suggest, we conclude that
using such directed growth mechanisms (e.g., electric or magnetic fields,
etc.) to ensure this alignment would hardly require undue experimentation.
In short, the fact that such “directed growth” techniques exist and are
well known in the art -- a fact that Appellants readily admit6 -- is itself
dispositive. Although Shin does not expressly disclose the technique used to
achieve the straight nanotube growth within the aperture,7 the skilled artisan
would have reasonably recognized that known techniques could be utilized
in Shin to achieve such directed growth.
Significantly, Appellants have not disputed that these well-known
techniques would not be at least capable of achieving such directed growth
(i.e., in a substantially straight line). Rather, Appellants’ argument is
premised on Shin’s failure to disclose any such technique. Such an
argument, however, hardly persuasively rebuts Shin’s presumption of
6 See Br., at 10 (“[C]ertain techniques have been proposed in the art for
influencing the direction of nanotube growth, such as the application of
electric or magnetic fields….”); see also Br., at 9-10 and Ev. App. (citing
articles to illustrate recognition of “the random growth of nanotubes absent
some mechanism for influencing the directionality of their growth”)
(emphasis added).
7 See, e.g., Shin, Figs. 6A-7D.
6
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