Ex Parte LI et al

Patent Trial and Appeal Board

Nov 8, 2017

13740967 (P.T.A.B. Nov. 8, 2017)

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.
13/740,967 01/14/2013 Angela W. Li 5013899.037US1 6301
102112 7590 11/13/2017
SMTTH MOORF T F ATHFRWOOD - ROFTNO
EXAMINER
2 WEST WASHINGTON STREET HUANG, CHENG YUAN
SUITE 1100
GREENVILLE, SC 29601 ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
11/13/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
tom. epting @ smithmoorelaw. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANGELA W. LI, JEFFREY H. HUNT,
and WAYNE R. HOWE
Appeal 2017-002883
Application 13/740,967
Technology Center 1700
Before TERRY J. OWENS, JEFFREY B. ROBERTSON, and
SHELDON M. McGEE, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
rejection of claims 1—8 and 10-14. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a coated optical element and an apparatus
comprising it. Claim 1 is illustrative:
1. A coated optical element comprising:
an optical element; and
a graphene coating layer disposed on a surface of the
optical element, wherein the graphene coating layer has a
thickness of about 100 nm or less, and wherein the coated
Appeal 2017-002883
Application 13/740,967
optical element exhibits an optical transparency of at least about
95 percent at wavelengths between about 200 nm and about
800 nm.
The References
Owa US 6,088,379 July 11,2000
Davis US 2010/0028960 A1 Feb. 4, 2010
Sutter US 2010/0255984 A1 Oct. 7, 2010
Yamazaki US 2011/0240111 A1 Oct. 6,2011
Yahav1 US 2015/0319418 A1 Nov. 5,2015
Handout 8, Carbon Nanotubes 61—70 (undated),
http://www2.physics.ox.ac.uk/sites/default/files/BandMT_08.pdf
(hereinafter Carbon Nanotubes).
The Rejections
The claims stand rejected as follows: claims 1—3 and 10-14 under
35 U.S.C. § 102(b) over Sutter as evidenced by Yahav and Owa, claims 1—6
and 10-14 under 35 U.S.C. § 103 over Davis in view of Sutter, Carbon
Nanotubes, Yahav and Owa, and claims 7 and 8 under 35 U.S.C. § 103 over
Davis in view of Sutter, Carbon Nanotubes, Yahav, Owa and Yamazaki.2
OPINION
We affirm the rejections.
1 The “Applicants do not acknowledge that Yahav is prior art, since Yahav
corresponds to a U.S. national phase application of a PCT application filed
on December 2, 2013, which is after Applicants’ filing date of January 14,
2013” (Reply Br. 2). The Appellants, however, do not assert that Yahav
fails to be prior art due to not being entitled to the benefit of its provisional
application (no. 61/732,361 filed December 2, 2012 and appearing to have
the same disclosure as the patent application).
2 These are new grounds of rejection introduced in the Examiner’s Answer
(Ans. 2-8).
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Appeal 2017-002883
Application 13/740,967
The Appellants argue the claims as a group (Reply Br. 2—10).
Although an additional reference is applied in the rejection of dependent
claims 7 and 8, the Appellants do not separately argue those claims (Reply
Br. 10). We therefore limit our discussion to one claim, i.e., claim 1.
Claims 2—8 and 10—14 stand or fall with that claim. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2012).
“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
Sutter discloses that “[a] mirror may be formed by a substrate of the
mirror material conformally coated with a layer of graphene. For example,
the substrate may be a bulk piece of transition metal, glass, fused silica, or
the like” (1135). The graphene coating layer is up to about ten atomic
layers or more thick (Abstract; claims 6 and 7).
Yahav discloses a “mirror with high quality 95% transmission in the
visual range between 380-700 nm wavelengths” (143).
Owa discloses 1) a mirror (241) which is “highly reflective
(reflectance of 99.9% or higher) for light of wavelength 707 nm. . . [and]
highly transmissive (transmission factor 95% or higher) for light near
500 nm” (col. 5,11. 28—32); 2) mirrors (223, 224) which “are highly
reflective (reflectance 99.9% or higher) for 266 nm light. . . [and] highly
transmissive (transmission factor 99.7% or higher) for 707 nm light” (col. 5,
11. 53—57), 3) mirrors (122, 124) which “are highly reflective (reflectance
99.9% or higher) for 266 nm light, but have high transmission (transmission
factor 99.7% or higher) for 707 nm light” (col. 7,11. 29-32), and
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Appeal 2017-002883
Application 13/740,967
4) mirror (421) which is “highly reflective (reflectance 99.9% or higher) for
772 nm light. . . [and] has high transmission (transmission factor 95% or
higher) of excited light with wavelength near 500 nm” (col. 8,1. 63 — col. 9,
1. 1).
The Appellants argue that because Sutter’s graphene-coated substrate
is a mirror it cannot have optical transparency of at least about 95 percent at
wavelengths between about 200 nm and about 800 nm, and that Yahav and
Owa are insufficient to show that Sutter’s mirror necessarily has that optical
transparency (Reply Br. 5—7).
The Appellants’ coated optical element can comprise a silica or quartz
substrate having thereon a graphene coating layer which is about 100 nm or
less thick (Spec. 127; claim 1). Sutter’s mirror can comprise a glass or
fused silica substrate having thereon a graphene coating layer with a
thickness up to ten atomic layers (Abstract; 1135; claims 6 and 7) which is
within the Appellants’ graphene coating layer’s thickness range. Sutter’s
mirror can have the same composition and structure and, therefore,
apparently the same properties, as the Appellants’ claimed coated optical
element, including the property of optical transparency of at least about
95 percent at wavelengths between about 200 nm and about 800 nm. Cf. In
re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the standpoint of
patent law, a compound and all of its properties are inseparable; they are one
and the same thing”).
“[W]hen the PTO shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
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Appeal 2017-002883
Application 13/740,967
The Appellants have not met that burden. Accordingly, we affirm the
rejection under 35 U.S.C. § 102(b).
As for the rejection under 35 U.S.C. § 103, because anticipation is the
epitome of obviousness, see In re May, 574 F.2d 1082, 1089 (CCPA 1978);
In re Skoner, 517 F.2d 947, 950 (CCPA 1975); In re Pearson, 494 F.2d
1399, 1402 (CCPA 1974), we also affirm that rejection.
DECISION/ORDER
The rejection of claims 1—3 and 10-14 under 35 U.S.C. § 102(b) over
Sutter as evidenced by Yahav and Owa and the rejections under
35 U.S.C. § 103 of claims 1—6 and 10-14 over Davis in view of Sutter,
Carbon Nanotubes, Yahav and Owa and claims 7 and 8 over Davis in view
of Sutter, Carbon Nanotubes, Yahav, Owa and Yamazaki are affirmed.
It is ordered that the Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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