PHILIPS LIGHTING HOLDING B.V.

Patent Trials and Appeals Board

Mar 1, 2021

2020002513 (P.T.A.B. Mar. 1, 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.
15/301,645 10/03/2016 Adrianus Johannes Maria Giesbers 2014P00058WOUS 5592
138325 7590 03/01/2021
Signify Holding B.V.
465 Columbus Avenue
Suite 330
Valhalla, NY 10595
EXAMINER
MCCLURE, CHRISTINA D
ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
03/01/2021 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):
Gigi.Miller@signify.com
jo.cangelosi@signify.com
kim.larocca@signify.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADRIANUS JOHANNES MARIA GIESBERS,
ABRAHAM RUDLOF BALKENENDE, and
LEENDERT VAN DER TEMPEL
Appeal 2020-002513
Application 15/301,645
Technology Center 1700
Before DONNA M. PRAISS, N. WHITNEY WILSON, 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 1–9 and 12. 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 SIGNIFY
HOLDING B.V. Appeal Br. 2.
Appeal 2020-002513
Application 15/301,645

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CLAIMED SUBJECT MATTER
The claims are directed to methods of preparing sheets of graphene
having variable thicknesses. The method includes three steps, as set forth in
the claims.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of preparing an at least partially transparent
and conductive layer comprising graphene, the method
comprising the steps of:
(a) applying a dispersion comprising graphene oxide onto
a substrate to form a layer comprising graphene oxide on the
substrate, wherein the thickness of the layer obtained in step (a)
is at least 10 μm;
(b) heating a first part of the layer by laser irradiation at a
first laser output power of at least 0.036 W to chemically reduce
at least a portion of the graphene oxide of the first part to
graphene and physically reduce the thickness of the first part of
the layer by ablation, wherein the heating in step (b) is adapted
to provide an energy density of less than 6.4 J/ mm2; and
(c) heating a second part of the layer different from the
first part of the layer by laser irradiation at a second laser output
power less than the first laser output power to chemically
reduce at least a portion of the graphene oxide of the second
part to graphene without physically reducing the thickness of
the second part of the layer by ablation, wherein the thickness
of the first part of the layer after step (b) is different than the
thickness of the second part of the layer after step (c).

Appeal Br. Claims App. 1.

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REFERENCES
The Examiner relies on the following prior art to reject the claims:
Name Reference Date
Gilje US 2010/0266964 A1 Oct. 21, 2010
Huang US 2010/0221508 A1 Sept. 2, 2010
Chen US 2012/0012796 A1 Jan. 19, 2012
Kaya WO 2014/117869 A1 Aug. 7, 2014
Romualdas Trusovas et al., Laser Induced Graphite Oxide/Graphene
Transformation, 7 J. Laser Micro/Nanoengineering 49–53 (2012)
(“Trusovas”).
Yonglai Zhang, et al., Direct imprinting of microcircuits on graphene
oxides film by femtosecond laser reduction, 5 Nano Today 15–20 (2010)
(“Zhang”).
REJECTIONS
The Examiner rejects claims 1–9 under 35 U.S.C. § 103 as
unpatentable over the combined disclosures of Gilje, Trusovas, Zhang,
Huang, and Kaya. Final Act. 4–14. The Examiner also rejects claim 12
under 35 U.S.C. § 103 as unpatentable over the combined disclosures of
these five references, as well as Chen. Id. at 14–15.
OPINION
We affirm the obviousness rejections for the reasons well-expressed
by the Examiner in the Final Action and the Answer. We add the following
comments for emphasis.
Appellant’s arguments are directed solely to the subject matter of
claim 1, and focus on the teachings of the references separately without
addressing what the combined teachings of the prior art would have
suggested to the skilled artisan. Appeal Br. 7–10. Such arguments do not
identify reversible error in the rejection because “[n]on-obviousness cannot
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be established by attacking references individually where the rejection is
based upon the teachings of a combination of references. . . . [The
reference] must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole.” In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
This reference-by-reference approach is particularly problematic here
because Appellant makes several assertions that a given reference does not
teach an aspect of the claim for which that reference was not relied upon.
Compare Appeal Br. 8 (“Huang does not disclose a chemical/physical
reduction of a first portion in a first step and a chemical-only reduction of a
second portion . . . in a second step”) with Final Act. 10–12 (acknowledging
this limitation is not taught by Gilje, Trusovas, Zhang, and Huang but then
discussing how this limitation would have been obvious in view of the
further teachings of Kaya); compare Appeal Br. 9 (asserting that Kaya uses a
“wholly dissimilar” method than that claimed and that Kaya lacks specific
teachings of the claimed method) with Final Act. 4–10 (discussing how the
other four relied-upon prior art references teach or suggest the claimed
method).
Appellant’s arguments also fail to address the entirety of the
disclosure upon which the Examiner relies. See Appeal Br. 7 (focusing on
Zhang’s teaching regarding chemical reduction without addressing the
Examiner’s reliance on Zhang’s further teaching regarding ablation); see
also Reply Br. 3–4 (failing to discuss Zhang’s disclosure regarding
ablation); Final Act. 7; Zhang, 18.
Moreover, Appellant unpersuasively argues limitations not recited in
the claim. See Appeal Br. 7 (arguing a 90% thickness reduction of the film);
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see also Reply Br. 3 (again arguing a 90% thickness reduction in an
unclaimed second stage ablation step). In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . .
they are not based on limitations appearing in the claims.”); Ans 16 (“as
written, claim 1 does not require a 90% reduction of thickness”).
Finally, we observe that Appellant makes a belated argument in the
Reply Brief without a good cause showing. See Reply Br. 7–9 (arguing the
Examiner relied on impermissible hindsight in reaching the obviousness
conclusion). Appellant has not explained, nor do we discern, why this
argument could not have been made in Appellant’s principal brief. Our rules
make clear that we do not consider such arguments in the absence of a
showing of good cause. 37 C.F.R. § 41.41(b)(2).
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1–9 103 Gilje, Trusovas, Zhang, Huang, Kaya 1–9
12 103 Gilje, Trusovas, Zhang, Huang, Kaya, Chen 12
Overall
Outcome 1–9, 12
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Application 15/301,645

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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