INSTITUT NATIONAL DE LA RECHERCHE SCIENTIFIQUE

Patent Trials and Appeals Board

Nov 19, 2020

2019005799 (P.T.A.B. Nov. 19, 2020)

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.
14/521,657 10/23/2014 LUIS CARDENAS 779/14448.148 1086
25545 7590 11/19/2020
Lavery, De Billy, LLP
1 Place Ville Marie, Suite 4000
Montreal, QUEBEC H3B 4M4
CANADA
EXAMINER
PADGETT, MARIANNE L
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
11/19/2020 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):
uspto@lavery.ca
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LUIS CARDENAS, JENNIFER MACLEOD,
JOSH LIPTON-DUFFIN, and FEDERICO ROSEI

Appeal 2019-005799
Application 14/521,657
Technology Center 1700
____________

Before JOSEPH L. DIXON, DONNA M. PRAISS, and
BRIAN D. RANGE, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–6, 9–18, and 20–23. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed Oct. 23, 2014 (“Spec.”),
the Final Office Action dated Oct. 11, 2018 (“Final Act.”), the Appeal Brief
filed Mar. 11, 2019 (“Appeal Br.”), the Examiner’s Answer dated June 3,
2019 (“Ans.”), and the Reply Brief filed July 26, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies INSTITUT NATIONAL DE LA
RECHERCHE SCIENTIFIQUE as the real party in interest. Appeal Br. 2.
Appeal 2019-005799
Application 14/521,657

2
STATEMENT OF THE CASE
The invention relates to a method of producing a graphene coating on
a stainless steel surface. Spec. ¶ 1. According to the Specification, stainless
steel is commonly used for implantable devices, however, stainless steel
material exhibits limited anticorrosive properties as passivating layers of
metal oxides are not sufficient to protect against pitting associated with
chloride ions in aqueous environments. Id. ¶ 2. The Specification describes
graphene membranes as inhibiting oxidation because they are impermeable
to all standard gasses, however, known methods of graphene synthesis
require a catalytically active support and use expensive evaporation
methods. Id. ¶¶ 3, 5. Claim 1, reproduced below, is the sole independent
claim and illustrative of the subject matter on appeal (disputed limitations
are italicized).
1. A method of producing a graphene coating on a
stainless steel surface, the method comprising the steps of:
electrochemically polishing the stainless steel surface,
casting a solution of a carbon precursor on the polished
stainless steel surface and allowing the solution to dry, and
heating the polished stainless steel surface in contact with
the carbon precursor, thereby producing said graphene coating
on said stainless steel surface,
wherein said electrochemical polishing is carried out in
an electrochemical cell comprising:
an electrolyte,
a cathode, and
the stainless steel surface as an anode, the cathode and
the anode being submerged in the electrolyte, and
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wherein the polished stainless steel surface used for the
heating step is coated with the carbon precursor only.
Appeal Br. 18 (Claims Appendix).

ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims and each of Appellant’s arguments, we are not persuaded of
reversible error in the appealed rejections.
The Examiner’s rejections rely on the following prior art references:
Name Reference Date
Chang US 2001/0009345 A1 July 26, 2001
Lee US 2012/0021250 A1 Jan. 26, 2012
Kub US 2012/0141799 A1 June 7, 2012
Loh US 2013/0102084 A1 Apr. 25, 2013
Goela US 2013/0171452 A1 July 4, 2013
Beasley US 2015/0235847 A1 Aug. 20, 2015
Kosmac
Alenka Kosmac, Electropolishing Stainless
Steels, Materials and Applications Series,
Vol. 11
2010
Talyzin
A.V. Talyzin et al., Coronene Fusion by
Heat Treatment: Road to
Nanographenes,115 J. Physical Chemistry
13207–14
2011
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The Examiner maintains the following rejections:3
Claim(s)
Rejected
35 U.S.C.
§ References/Basis
1–6, 9, 11–18, 20–23 103 Lee, Kosmac, Kub, (Beasley or Talyzin), (Chang or Loh, or Goela)
10 103
Lee, Kosmac, Kub, (Beasley or
Talyzin), (Chang or Loh or Goela),
Beasley

Appellant does not separately argue the patentability of dependent
claims 2–6, 9, 11–18, and 20–23. Appeal Br. 9–16. In accordance with 37
C.F.R. § 41.37(c)(1)(iv), and based upon the lack of arguments directed to
the subsidiary rejection of claim 10, claims 2–6, 9–18, and 20–23 will stand
or fall together with independent claim 1 from which they depend.
Appellant contends the Examiner erred in rejecting the claims because
Lee requires a protective layer in order for a carbon thin film to form
whereas the claims are direct to coating with the carbon precursor only
without other components such as a protective layer coating. Appeal Br. 9–
10. Appellant asserts that no carbon thin film forms when the protective
layer is absent in Lee’s comparative examples 1–6 and accompanying
Figures 7 and 8. Id. at 10. Appellant further argues that neither Beasley nor
Talyzin cures Lee’s deficiency because neither reference discloses the
substrate is stainless steel, but, rather, uses a silicon substrate. Id. at 10–11.
In addition, Appellant points out that Talyzin does not report the formation

3 The Amendment filed Sept. 14, 2016 cancelled claim 7. Therefore, we
understand the Examiner’s inclusion of claim 7 in statements of the rejection
to be a typographical error. Final Act. 6; Ans. 3.
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of graphene, but only that Talyzin’s study could potentially lead to a
graphene synthesis method. Id. at 11.
Regarding Kosmac, Appellant argues the reference teaches
electropolishing produces a passive surface, which suggests it would be
improper to allow graphene deposition. Id. at 13. Appellant disputes the
Examiner’s finding that Kosmac’s post-treatment step employing nitric acid
is the passivation step instead of electropolishing causing passivation. Id. at
12. Appellant asserts the Examiner’s citation to Mohan as further evidence
only indicates that it is the electropolishing step that is useful to produce a
passive surface because if the passive surface was due to the post-treatment
step, then Mohan would indicate that any polishing method followed by the
same post-treatment produces a passive surface and not specifically
electropolishing. Id. at 13.
Appellant further argues that the presence of chromium was known to
be detrimental to graphene growth. Id. at 14 (citing Spec. ¶ 59; John4).
Therefore, because Kosmac discloses that electropolishing leaves the surface
rich in chromium, a skilled artisan would have understood electropolished
stainless steel to be passive toward graphene growth. Id. Appellant asserts
that Kosmac, at most, teaches that electropolishing cleans the surface which
is not equivalent to a surface that is catalytically active towards graphene
growth. Id.
Finally, Appellant argues Kub does not suggest it was preferable to
use electropolishing over the other processes listed when considering

4 Robin John, et al., Single- and few-layer graphene growth on stainless steel
substrates by direct thermal chemical vapor deposition, 22 Nanotechnology
165701 (2011) cited in paragraph 64 of the Specification and incorporated
by reference.
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graphene growth by CVD on stainless steel. Id. at 15–16. Appellant
acknowledges that Kub discloses both stainless steel and electropolishing,
but contends they are included among lists of other materials and processes
for treating a metal foil substrate prior to growing graphene by a variety of
growing methods that Appellant refers to as “a pell-mell description of
conditions.” Id. Thus, Appellant asserts a person having ordinary skill in the
art would have concluded from Kosmac that electropolishing is not a
suitable treatment for a stainless steel surface intended to be used for
graphene growth by CVD because it renders the surface less reactive, and,
therefore, would have been led away from selecting electropolishing over
Kub’s other surface treatment processes. Id. at 16.
Appellant challenges the prior art combination on the basis that a
skilled artisan would have been lead away from the selection of
electropolishing for treating stainless steel for graphene growth by CVD.
Appeal Br. 10. Appellant’s argument is not persuasive of error because it is
not supported by the cited record. Appellant relies on particular factual
findings concerning Lee and John which are not supported by the
preponderance of the evidence cited in this Appeal record for the reasons
that follow.
Appellant asserts Lee requires a protection layer in order to form a
carbon thin film on a substrate as performed in each of Lee’s examples. This
argument regarding Lee is not persuasive of error because Lee’s disclosure
is not limited to its examples. In a determination of obviousness, a reference
may be relied upon for all that it would have reasonably suggested to one
having ordinary skill in the art. Merck & Co. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a
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multitude of effective combinations does not render any particular
formulation less obvious.”). Moreover, “a reference is not limited to the
disclosure of specific working examples.” In re Mills, 470 F.2d 649, 651
(CCPA 1972). As the Examiner finds, Lee’s examples do not test the
stainless steel substrate, which Lee explicitly discloses. Ans. 6; Lee ¶ 49
(“The substrate . . . may be . . . stainless steel.”). The Examiner also finds
that Lee teaches that metals including Ni, Co, Fe, Cr, or combinations of two
or more of these metals, are known to provide a catalytic surface for
graphene formation. Ans. 5, 7 (citing Lee ¶¶ 29, 49). The Examiner finds Cr,
Ni, and Fe are all known catalytic metals and typical alloy components of
stainless steel. Id. at 5. The Examiner’s findings are supported by the record.
Lee ¶¶ 29 (“The method may further include forming a catalyst layer on the
substrate before forming the polymer layer. In this regard, the catalyst layer
may include nickel (Ni), . . . iron (Fe), . . .[or] chromium (Cr).”), 49 (“The
substrate . . . may be . . . metal foils such as . . . stainless steel . . . . The
metal foil may include . . . material acting as a catalyst capable of forming
the carbon thin film such as copper foil and nickel foil.”).
In the Reply Brief, Appellant asserts that the “mere removal” of an
oxide passivation layer “does not mean that the resulting bare metal surface
will become catalytically active towards graphene growth.” Reply Br. 2.
Appellant asserts that to be catalytically active toward graphene growth, the
surface must be high in metal atoms that catalyze graphene growth and low
in the number of metal atoms that are neutral or deleterious to graphene
growth. Id. Appellant’s argument regarding the catalytically active surface
does not dispute the Examiner’s finding (Ans. 5) that Ni, Co, Fe, Cr, or
combinations of two or more of these metals are known to provide a
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catalytic surface for graphene formation. Rather, Appellant’s response is
based on Appellant’s assertion that an electropolished surface rich in
chromium, which Kosmac suggests stainless steel is, is known to be
deleterious to graphene growth. Reply Br. 3.
Appellant’s assertion that chromium inhibits graphene growth is not
persuasive of error because it is not supported by the evidence cited in this
Appeal record. Appellant’s position is essentially that electropolishing
enriches the chromium content of an alloy due to iron and nickel being more
easily extracted from the crystal lattice than chromium., According to
Appellant, a person having ordinary skill in the art would not expect the
enriched chromium content to support graphene growth. This chromium
inhibition of graphene growth phenomenon that Appellant relies upon is
alleged to be supported by John. Appeal Br. 14.
The Examiner correctly finds that John discloses oxides containing
chromium (Cr2O3 or MnCr2O4), rather than chromium, will inhibit graphene
growth on stainless steel with CVD processes. Ans. 5 (citing John p. 3, col.
2). In the Reply Brief, Appellant does not adequately explain why John’s
disclosure of these particular oxides would be understood by a person having
ordinary skill in the art as teaching that chromium, rather than oxides,
prevents the formation of graphene. Reply Br. 4 (quoting the same passage
that the Examiner cites which specifies Cr2O3 or MnCr2O4 rather than
chromium). Therefore, we are not persuaded the Examiner’s findings
regarding John constitute reversible error.
In sum, the preponderance of the evidence in this appeal record
supports the Examiner’s conclusion that the claimed subject matter would
have been obvious in view of Lee, Kosmac, Kub, Beasley, Talyzin, Chang,
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Loh, and Goela. Accordingly, we affirm the Examiner’s rejection of claim 1
under 35 U.S.C. § 103 for the above reasons and those provided by the
Examiner.
Because we find Appellant’s arguments unpersuasive of error in the
Examiner’s rejection of claim 1, we likewise affirm the Examiner’s rejection
of claims 2–6, 9–18, and 20–23 for the same reasons.
CONCLUSION
For these reasons and those the Examiner provides, we affirm the
Examiner’s rejections of claims 1–6, 9–18, and 20–23 under 35 U.S.C. § 103
as obvious over the cited prior art references.

DECISION SUMMARY
In summary:
Claim(s)
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
1–6, 9, 11–
18, 20–23 103
Lee, Kosmac, Kub,
Beasley, Talyzin,
Chang, Loh, Goela
1–6, 9, 11–
18, 20–23
10 103
Lee, Kosmac, Kub,
Beasley, Talyzin,
Chang, Loh, Goela
10
Overall
Outcome
1–6, 9–18,
20–23

TIME PERIOD FOR RESPONSE
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)(iv).

AFFIRMED