Ex Parte G¿lzh¿user et al

Patent Trial and Appeal Board

May 22, 2015

12675285 (P.T.A.B. May. 22, 2015)

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.
12/675,285 02/25/2010 Armin G¿lzh¿user 10-042-WO-US 3209
20306 7590 05/22/2015
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
MCCRACKEN, DANIEL
ART UNIT PAPER NUMBER
1736
MAIL DATE DELIVERY MODE
05/22/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ARMIN GOLZHAUSER and ANDREY TURCHANIN
____________

Appeal 2013-008117
Application 12/675,285
Technology Center 1700
____________

Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1–10 and 12–14. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Appellants do not argue any claim apart from the others. We select
claim 1 as representative. Claim 1 reads (emphasis added):

1. A method for preparing a graphene layer, comprising the step
of heating a laterally crosslinked monolayer of low-molecular weight
aromatics and/or low-molecular weight heteroaromatics under vacuum or
inert gas to a temperature of greater than 1000 K.

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Application 12/675,285

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The Examiner maintains, and Appellants appeal, the following
rejection:
Claims 1–10 and 12–14 rejected under 35 U.S.C. § 103(a) as
unpatentable over Eck (Freestanding Nanosheets from Cross/inked Biphynyl
Self-Assembled Monolayers, 17 ADV. MATER. ; 2583–2587 (2005)) and
Murakami (US 4,915,984 issued April 10, 1990).

ANALYSIS
As a preliminary matter, we first address the dispute concerning
Appellants’ definition of graphene.
Independent claim 1 is directed to a method of making graphene.
Appellants define graphene in their Specification as a graphite layer, which
is an electrically conductive layer largely composed of carbon and which
consists of several atomic layers, preferably 1 to 3 atomic layers, that may
optionally have dopants. Spec. paragraph bridging 1–2 (the graphite layer of
the invention “may as well be referred to as graphene layer”).
Appellants are entitled to be their own lexicographers and may clearly
provide a definition of a term that is different from its ordinary and
customary meaning(s). In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)
(explaining that an inventor may define specific terms used to describe
invention, but must do so “with reasonable clarity, deliberateness, and
precision” and, if done, must “set out his uncommon definition in some
manner within the patent disclosure’ so as to give one of ordinary skill in the
art notice of the change” in meaning) (quoting Intellicall, Inc. v.
Phonometrics, Inc., 952 F.2d 1384, 1387–88 (Fed. Cir. 1992)). Where an
explicit definition is provided by the applicant for a term that definition will
control interpretation of the term as it is used in the claim. Toro Co. v. White
Consol. Indus. Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999).
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According to the Examiner, one skilled in the art would understand
graphene to mean a single atomic layer of carbon. Ans. 6; Nobel
1
. The
Examiner found Appellants, acting as their own lexicographers, have
deliberately departed from this established meaning by defining graphene as,
preferably, a graphite layer composed of carbon, which consists of 1 to 3
atomic layers. Ans. 6–7; Spec. paragraph bridging 1–2. That is, contrary to
the established meaning noted above, Appellants’ graphene can comprise
more than single atomic layer of carbon. Thus, the Examiner found
Appellants’ graphene having multiple atomic layers of carbon reasonably
encompasses graphite. Ans. 9.
After careful review of the record, including the Declaration of Dr.
Armin Goldhauser (Declaration)
2
, we agree with the Examiner that the
Specification defines graphene with reasonable clarity, deliberateness, and
precision so as to give one of ordinary skill in the art notice of the change in
meaning. Paulsen, 30 F.3d at 1480.
While Appellants present arguments in the Appeal Brief and rely on
statements in the Declaration to bring out the distinctions between graphene
and bulk graphite, these arguments and statements do not detract from the
clear definition of graphene in the Specification. App. Br. 5–8; Decl. ¶¶ 7–
10. Thus, we find no error in the Examiner’s reliance on Appellants’
definition of graphene as a graphite layer composed of carbon, which
consists of 1 to 3 atomic layers.

1
Scientific Background on the Nobel Prize in Physics 2010. The Royal
Swedish Academy of Sciences, pp. 1–10 (5 October 2010).
2
The Declaration of Dr. Armin Goldhauser submitted on March 19, 2012
and entered into the record by the Examiner in the Final Office Action dated
July 16, 2012. Final Act. 3.
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The Prior Art Rejection
3

We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in agreement with the Examiner that the
subject matter of independent claim 1 is unpatentable under § 103 in view of
the applied prior art. We add the following primarily for emphasis.
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements or steps according to their established functions. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). “[T]he analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418.
The Examiner found Eck teaches forming self-assembled monolayers
(SAM) of crosslinked l,l'-biphenyl-4-thiol 4'-nitro-l,1'-biphenyl-4-thiol.
Final Act. 8; Eck 2583. The Examiner found Eck does not teach heating the
monolayer to form graphite or graphene. Final Act. 8. The Examiner found
Murakami teaches graphitizing polymer films by heating at the claimed
temperatures under inert or vacuum atmospheres. Final Act. 8; Murakami
col. 4, ll. 17–39. The Examiner found it would have been obvious to one
skilled in the art to modify Eck by incorporating the heating step of
Murakami because it would have been the application of a known technique

3
We limit our discussion to representative independent claim 1 as
Appellants do not present separate arguments for dependent claims 2–10 and
12–14. See Appeal Brief, generally. Accordingly, dependent claims 2–10
and 12–14 stand or fall with independent claim 1.
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(graphitizing as exemplified in Murakami) to follow a known method of
preparing a self-assembled monolayer(SAM as exemplified Eck) to achieve
predictable results (graphite/graphene). Final Act. 8.
Appellants argue Eck discloses making cross-linked aromatic self-
assembled monolayers (SAMs) and not graphene. App. Br. 9; Decl. ¶ 8;
Eck 2583. Appellants further argue Eck does not mention any heat-
treatment step for obtaining a graphene layer from nanosheets or suggests
heat-treatment of nanosheets as desirable. App. Br. 9. Appellants also argue
Murakami merely describes a process for producing common graphite films
and fibers from polymeric materials by annealing in vacuum or inert gas
under pyrolytic conditions. App. Br. 9; Murakami col. 4, ll. 17–39. Thus,
Appellants argue the prior art does not suggest to one skilled in the art how
Murakami's pyrolysis method, drawn to different polymeric materials than
Eck, can be adopted for SAMs. App. Br. 6; Decl. ¶ 10.
We are unpersuaded by these arguments and agree with the
Examiner’s determination of obviousness. As noted by the Examiner, the
subject matter of independent claim 1 requires graphitizing an aromatic
polymer layer at an open-ended temperature range in an inert atmosphere or
vacuum to make thin (1–3) layers of graphite/graphene. App. Br. 13. The
Examiner found Murakami discloses graphitization of aromatic polymer
materials is well known.
4
Ans. 13; Murakami col. 4, ll. 17–39. The
Examiner also found Eck discloses single atomic layers of aromatic

4
The Examiner cited Dahn as rebuttal evidence further describing the
mechanism of graphitization. Final Act. 7–8; Ans. 12–13. Appellants chose
not to address the Examiner’s reliance on this reference. See Appeal Brief,
generally; Reply Br. 7. A discussion of this reference is unnecessary for
disposition of this appeal.
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polymers/molecules are also known. Ans. 13; Eck 2583. Thus, the
Examiner found graphitizing a single layer of aromatic polymers per the
process in Murakami is reasonably expected to make the claimed graphene,
especially in light of Appellants’ definition. Ans. 13. Appellants have not
adequately shown otherwise.
While Appellants argue that Eck’s SAMS and Murakami’s polymers
are structurally different (App. Br. 6; Decl. ¶ 10), Appellants have not
adequately explained why Murakami’s graphitization process could not have
been adopted to/practiced with Eck’s SAMS. Appellants have not
adequately explained why the aromatic materials from which Eck’s SAMS
are made would not have been suitable for graphitization via Murakami’s
process. . “Obviousness does not require absolute predictability of success .
. . all that is required is a reasonable expectation of success.” In re Kubin,
561 F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re O’Farrell, 853 F.2d 894,
903-04 (Fed. Cir. 1988)). Furthermore, inasmuch as heating under vacuum
or inert gas to a temperature of greater than 1000 K was known in the art as
a suitable method for forming graphite from polymer films, it is incumbent
upon Appellants to establish that the present inventors had to resort to more
than routine experimentation to determine if this method would have been an
effective method to apply to a polymeric SAM of the type disclosed by
Eck. However, no such evidence is of record.
We have considered the Declaration, but do not find it persuasive of
establishing patentability of the appealed subject matter. Although factual
evidence is preferable to opinion testimony, such testimony is entitled to
consideration and some weight so long as the opinion is not on the ultimate
legal conclusion at issue. While an opinion as to a legal conclusion is not
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entitled to any weight, the underlying basis for the opinion may be
persuasive. In re Chilowsky, 306 F.2d 908, 916 (CCPA 1962) (expert
opinion that an application meets the requirements of 35 U.S.C. § 112 is not
entitled to any weight; however, facts supporting a basis for deciding that the
specification complies with 35 U.S.C. § 112 are entitled to some weight); In
re Lindell, 385 F.2d 453, 456 (CCPA 1967). On this record, Declarant has
not directed us to persuasive evidence sufficient to establish that a person of
ordinary skill in the art would not have recognized the suitability of using
Murakami’s process for graphitizing a SAM as exemplified in Eck.
Accordingly, we affirm the Examiner’s prior art rejection of claims 1–
10 and 12–14 under 35 U.S.C. § 103(a) for the reasons presented by the
Examiner and given above.
ORDER
The Examiner’s prior art rejection of claims 1–10 and 12–14 under 35
U.S.C. § 103(a) is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED
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