Ex Parte LI et alDownload PDFPatent Trial and Appeal BoardNov 8, 201713740967 (P.T.A.B. Nov. 8, 2017) Copy Citation 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 patentadmin @ boeing. com michelle. du vail @ smithmoorelaw .com 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). 2 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 3 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). 4 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 5 Copy with citationCopy as parenthetical citation