Ex Parte Hiura

Board of Patent Appeals and Interferences

Sep 25, 2002

09432610 (B.P.A.I. Sep. 25, 2002)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HIDEFUMI HIURA
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Appeal No. 2002-0465
Application No. 09/432,610
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HEARD: September 17, 2002
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Before WALTZ, KRATZ and TIMM, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 28-37, which are all of the claims pending in
this application.
BACKGROUND
Appellant's invention relates to a method for treating a
surface atomic layer of a graphite sheet comprising the steps of
selecting a pattern, determining growth points that can be
expanded to form the selected pattern, forming generally circular
Appeal No. 2002-0465
Application No. 09/432,610
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holes only in the surface atomic layer of the graphite sheet at
the growth points and enlarging the holes in a radial direction
by heating to form the selected pattern. An understanding of the
invention can be derived from a reading of exemplary claim 28,
which is reproduced below.
28. A method of patterning a surface atomic layer of a
graphite sheet, comprising the steps of:
selecting a pattern to be formed in a surface atomic layer
of a graphite sheet;
determining growth points in the selected pattern that will
expand to form the selected pattern;
forming generally circular holes at the growth points only
in the surface atomic layer; and
radially enlarging the holes in the surface atomic layer by
heating the surface atomic layer until the selected pattern is
formed.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Hoffman 5,271,917 Dec. 21, 1993
Jones, “C-Axis Microcone Formation In Nuclear Graphites Due To
Graphite Removal By Impurity-Inhibited Electronically-Excited
Oxidation Reactions,” Carbon, Vol. 8, pp. 681-83 (1970).
Brown, “The Equilateral Nature Of The Hexagonal Etch Pit
Developed During Carbon Oxidation,” Carbon, Vol. 25, No. 5,
pp. 617-19 (1987).
Appeal No. 2002-0465
Application No. 09/432,610
Page 3
We limit our review to the two rejections advanced by the
examiner. In this regard, claims 28, 29 and 32-37 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Hoffman in view
of Brown. Claims 28-37 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Jones in view of Brown.
Rather than reiterating the conflicting viewpoints advanced
by the examiner and appellant regarding the above-noted
rejection, we make reference to the examiner’s answer and to
appellant’s briefs for a complete exposition thereof.
OPINION
Upon careful review of the entire record including the
respective positions advanced by appellant and the examiner,
we find ourselves in agreement with appellant insofar as the
examiner has failed to carry the burden of establishing a prima
facie case of obviousness. See In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki,
745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984).
Accordingly, we will not sustain the examiner's rejections.
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Application No. 09/432,610
Page 4
1 We note, for example, that Hoffman appears to be concerned
with increasing the active surface area and roughness of a carbon
fiber surface and does not even appear to mention forming holes
in a surface atomic layer of graphite at selected growth points
let alone treat such a surface as herein claimed to form a
pattern via heating the surface atomic layer so as to enlarge
such holes.
A reading of appealed claim 28, the sole independent claim
on appeal, reveals that all of the claims on appeal require a
method that includes several steps as outlined above for
patterning a surface atomic layer of a graphite sheet.
With regard to the examiner’s § 103 rejection over Hoffman
and Brown, the examiner (answer, pages 2 and 3) asserts that
Hoffman treats graphite with catalytic metal to enlarge surface
defects/pores and relies on Brown for allegedly showing a regular
hole shape that Hoffman does not disclose. However, even if we
could agree with all of the examiner’s assertions regarding the
prior art teachings, which we do not,1 the examiner has not
fairly established how those teachings that the examiner
attributes to the applied references would have led one of
ordinary skill in the art to the here claimed method.
With regard to the examiner’s § 103 rejection over Jones and
Brown, the examiner’s explanation falls somewhat short of making
Appeal No. 2002-0465
Application No. 09/432,610
Page 5
out a prima facie case of obviousness. While Jones is at least
concerned with treating graphite to form a cone-shaped micro-
structure via electronically-excited gas-graphite oxidation
reactions and Brown suggests that modeling (Monte Carlo
simulation) predicts that equilateral hexagonal etch pits may be
formed during carbon oxidation of thin graphite slices assuming
etch pit sides burn sequentially, the examiner simply has not
established how the combination of Jones and Brown teach or
suggest the here claimed patterning method. In this regard, the
examiner’s comments (answer, pages 3 and 4) regarding responsible
experiments and the obviousness of creating “holes in the same
shape and location claimed in the process of Jones. . .” (Answer,
page 4) says little, if anything, as to how one of ordinary skill
in the art would have arrived at the claimed invention from the
actual teachings of each of the applied references alone or in
combination. On this record, we will not sustain the rejections
as stated by the examiner.
CONCLUSION
The decision of the examiner to reject claims 28, 29 and 32-
37 under 35 U.S.C. § 103 as being unpatentable over Hoffman in
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Application No. 09/432,610
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view of Brown and to reject claims 28-37 under 35 U.S.C. § 103 as
being unpatentable over Jones in view of Brown is reversed.
REVERSED
THOMAS A. WALTZ )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
PFK:psb
Appeal No. 2002-0465
Application No. 09/432,610
Page 7
Young & Thompson
745 South 23rd Street
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APPEAL NO. - JUDGE KRATZ
APPLICATION NO.
APJ KRATZ
APJ
APJ
DECISION: ED
Prepared By:
DRAFT TYPED: 07 Aug 03
FINAL TYPED: