INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Mar 12, 2021

2020002888 (P.T.A.B. Mar. 12, 2021)

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.
13/745,170 01/18/2013 Ali Afzali-Ardakani YOR920120893US1 6483
48915 7590 03/12/2021
CANTOR COLBURN LLP-IBM YORKTOWN
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
GUO, TONG
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
03/12/2021 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALI AFZALI-ARDAKANI, AHMED A. MAAROUF,
and GLENN J. MARTYNA
Appeal 2020-002888
Application 13/745,170
Technology Center 1700
Before LINDA M. GAUDETTE, MERRELL C. CASHION, JR., and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 5–8. We have jurisdiction.
35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as International
Business Machines Corporation. Appeal Br. 2.
Appeal 2020-002888
Application 13/745,170
2
CLAIMED SUBJECT MATTER
The claims are directed to a graphene nanomesh comprising a
graphene sheet having a plurality of pores formed therethrough, with the
inner edge of the pore being an active carbon site. Claim 1. The claims
require a plurality of passivation elements, e.g., styrene or ethylene, to have
a total length of 3 nanometers and to bond to the active carbon sites. Id.
This is illustrated in Figures 2A and 2B of the Drawings, reproduced below:

Figure 2A, reproduced above, depicts graphene sheet 200 with nanopore 202
having inner diameter d1 and active carbon sites 204 along the inner edge of
the graphene sheet. Spec. ¶ 27. Figure 2A also illustrates passivation
elements 206 having length L prior to bonding with the active sites. Id.
Figure 2B depicts graphene sheet 200 after passivation elements 206 bond to
active carbon sites 204 to form functional groups extending into nanopore
202 and yielding a smaller second diameter d2. Id. ¶ 28
Appeal 2020-002888
Application 13/745,170
3
Claim 1 is illustrative of the claimed subject matter and is reproduced
below with key limitations italicized:
1. A graphene nanomesh, comprising:
a graphene sheet comprised entirely of a hexagonal lattice
of carbon atoms, the graphene sheet having a plurality of pores
formed therethrough, each pore surrounded completely by the
hexagonal lattice of carbon atoms and having a first diameter
defined by an inner edge of the graphene sheet, the inner edge
being an active carbon site; and
a plurality of passivation elements bonded to the active
carbon site of the inner edge of each pore so as to form covalent
bonds between the passivation elements and the active carbon
sites to define at least one functional group, the plurality of
passivation elements extending into a respective pore thereby
defining a second diameter that is less than the first diameter to
decrease an overall diameter of at least one pore among the
plurality of pores,
wherein the at least one functional group comprises at least
one of a carboxyl group and an amine, and wherein the
passivation elements are selected from a group comprising
styrene and ethylene, and
wherein the passivation elements have a total length of 3
nanometers (nm) such that the second diameter is less than 1
nanometer.
REJECTION
The Examiner rejects all claims on appeal––claims 1 and 5–8––under
35 U.S.C. § 103 as unpatentable over Sun2 and Sjong.3 Final Act. 2–7. In
the rejection, the Examiner appears to find that Sun teaches or suggests all of
the limitations of claim 1, and only appears to rely on Sjong as an additional

2 US 2011/0236984 A1, published September 29, 2011.
3 US 2014/0154811 A1, published June 5, 2014.
Appeal 2020-002888
Application 13/745,170
4
teaching or suggestion of a “plurality of pores” in a graphene membrane. Id.
at 2–5.
OPINION
We review the rejection based on the arguments and evidence
presented by Appellant. 37 C.F.R. § 41.37(c)(1)(iv); 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) (explaining that even if the
Examiner had failed to make a prima facie case, “it has long been the
Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections”).
Appellant’s main contention on appeal is that Sun does not disclose
the claimed “graphene sheet comprised entirely of a hexagonal lattice of
carbon atoms” having a pore surrounded completely by the hexagonal lattice
of carbon atoms. Appeal Br. 4–6. Appellant asserts that Sun does not teach
this limitation because Sun’s “nanopore 112 consists of an alternating stack
of graphene layers 114, 116, and 118, and dielectric layers (e.g., SiO2 and
SiN).” Id. at 5.
In support of this argument, Appellant provides a drawing––based on
a separate embodiment illustrated in Figures 23 and 24––purporting to
represent a top view of “nanopore 112 taken along line 6–6” of Figure 25.
Id. This representation, along with the annotated Figure 25 identifying line
6–6, is reproduced below:
Appeal 2020-002888
Application 13/745,170
5

Appellant’s annotated Figure 25 includes a line 6–6 appearing to bisect
graphene electrode 114, and Appellant’s representative drawing depicts what
Appellant asserts would be a cross-sectional view of Sun’s Figure 25 along
line 6–6. Appeal Br. 5.
We are unpersuaded by this argument as it reflects a misunderstanding
of Sun’s disclosure. Sun makes clear that Figure 25 already illustrates the
graphene electrode layers spaced apart from one another by the dielectric
layers. Sun ¶ 153 (“As shown,[4] electrode layers 114, 116, and 118 are
spaced apart from one another by dielectric layers comprising silicon nitride
or a dielectrics polymer.” (emphasis added)). Therefore, Appellant’s
attempt at reconstructing a “top view” of the Figure 25 embodiment
erroneously places the dielectric layers as “dielectric spacer[s]” on the same
plane as Appellant’s line 6-6. Appeal Br. 5; see Ans. 11 (“As shown,
electrode layers 114, 116, and 118 are spaced apart from one another

4 Notably, Sun makes no such statement indicating that dielectric spacers
103, 105, and 107 or counter-electrode 101 are illustrated or “shown” in
Figure 23. Sun ¶ 152. This is because Sun’s Fig. 23 is “a cross-sectional
side view” of a cylindrical embodiment, and dielectric spacers 103, 105, and
107, and counter-electrode 101 are on the same plane as electrodes 92 and
94, as illustrated in the “top view” of Fig. 24. Id.
Appeal 2020-002888
Application 13/745,170
6
(vertically) by dielectric layers,” and such electrode layers “are (single plane
or horizontal) graphene.”). In other words, contrary to Appellant’s apparent
belief, Sun’s dielectric layers of Si3N4 appear above and below electrode
layer 116, not within layer 116 as “spacers.” Sun, Fig. 25; Appeal Br. 5.
We are also unpersuaded by Appellant’s other arguments. For
example, Appellant asserts that the Examiner relies on “the inherent spacing
between the carbon atom nuclei” as the claimed pore. That is unpersuasive
because the Examiner maps the claimed graphene sheet to Sun’s graphene
layers 114, 116, and 118, each with nanopore 112 therethrough.5 Final Act.
2–3 (citing Sun, Figs. 26, 27, ¶ 153). Appellant also asserts that the skilled
artisan would not have applied an e-beam to Sun’s electrodes to form an
opening, and asserts that Sun’s electrodes cannot be modified based on
Sjong’s teachings to arrive at graphene sheet having pores “surrounded
completely by the hexagonal lattice of carbon atoms.” Appeal Br. 6–7. We
discern no merit in these arguments because the claims do not require the
use of an e-beam and because Sun already teaches a pore surrounded
completely by the hexagonal lattice of carbon atoms. Sun ¶ 153, Fig. 25.
Thus, because Appellant’s arguments fail to identify reversible error
in the Examiner’s rejection, we sustain it.
CONCLUSION
The Examiner’s rejection is affirmed.

5 Indeed, Appellant acknowledges Sun teaches nanopore 112 in its
representative drawing. Appeal Br. 5.
Appeal 2020-002888
Application 13/745,170
7
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5–8 103(a) Sun, Sjong 1, 5–8

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED