2020003284 (P.T.A.B. Apr. 21, 2021)

Tufts University

Patent Trials and Appeals BoardApr 21, 2021

2020003284 (P.T.A.B. Apr. 21, 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. 15/321,296 12/22/2016 Sameer Sonkusale 70011-040US1 3928 69713 7590 04/21/2021 OCCHIUTI & ROHLICEK LLP 50 Congress Street Suite 1000 Boston, MA 02109 EXAMINER LIU, BENJAMIN T ART UNIT PAPER NUMBER 2893 NOTIFICATION DATE DELIVERY MODE 04/21/2021 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): INFO@ORPATENT.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SAMEER SONKUSALE, SHIDEH KABIRI AMERI ABOOTORABI, and PRAMOD KUMAR SINGH Appeal 2020-003284 Application 15/321,296 Technology Center 2800 Before JAMES C. HOUSEL, JEFFREY R. SNAY, 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 2–19. We have jurisdiction. 35 U.S.C. § 6(b). We reverse. 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 Tufts University. Appeal Br. 1. Appeal 2020-003284 Application 15/321,296 2 CLAIMED SUBJECT MATTER The claims are directed to an apparatus containing a field-effect transistor having a channel comprising a three-dimensional graphene foam made of a network of graphene strips made from monolayer or bilayer graphene. Sole independent claim 4, reproduced below, is illustrative of the claimed subject matter: 4. An apparatus comprising a field-effect transistor having a channel that comprises a three-dimensional graphene foam that comprises an interconnected network of graphene strips, wherein said graphene strips are made of a form of graphene selected from the group consisting of monolayer graphene and bilayer graphene. Appeal Br. 27 (Claims App.). STATEMENT OF THE CASE The Examiner rejects claims 2–19 under 35 U.S.C. § 103 as unpatentable over the combined disclosures of Biener and Stride with or without additional prior art. Final Act. 3–12. Regarding independent claim 4, the Examiner finds that Biener discloses all the limitations recited therein, except for the claimed requirement that the graphene strips in the foam “are made of a form of graphene selected from the group consisting of monolayer graphene and bilayer graphene.” Id. at 3–4. To address this difference between Biener and claim 4, the Examiner turns to Stride, which the Examiner finds discloses monolayer graphene. Id. at 4. Based on these teachings, the Examiner determines that it would have been obvious to modify Biener’s apparatus to include monolayer graphene Appeal 2020-003284 Application 15/321,296 3 strips “in order to gain the advantages of a three-dimensional foam having improved structural, thermal and electronic properties inherent in monolayer graphene.” Id. OPINION We reverse the rejections of claims 2–19 because the Examiner has provided neither the requisite factual support nor the articulated reasoning necessary to support the obviousness conclusion. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies” in the cited references); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Here, the Examiner refers to “improved” properties that would be inherent in monolayer graphene, but fails to identify––much less provide evidence to support––what such inherent properties are. Final Act. 4. Such assertions without evidence do not satisfy the Office’s burden to support a rejection with facts. The Examiner’s proffered rationale for modifying Biener’s graphene foam with Stride’s monolayer graphene is rooted in this unsupported assertion and likewise fails. Id. When challenged on this point (Appeal Br. 3–4), the Examiner responds by asserting there are “many beneficial reasons to use graphene.” Ans. 4. Of the reasons the Examiner provides, however, Appellant is correct that Stride discloses most of these purported benefits are associated with Appeal 2020-003284 Application 15/321,296 4 graphene generally and are not necessarily specific to the monolayer or bilayer graphene required by the claims. Reply Br. 3; Ans. 4; Stride, 27:3– 29. Such purported benefits are presumably already present in Biener’s graphene foam. Only one of Stride’s purported benefits pointed out by the Examiner is relevant to bilayer graphene within the scope of claim 4––i.e., “Stride teaches that ‘significant semiconductor gaps can still be engineered in graphene, and ΔE of up to 0.3 eV can be induced in bi-layer graphene externally by applying a gate voltage’.” Ans. 4 (citing Stride, 27:26–29). The Examiner, however, fails to explain how that particular benefit applies to Biener’s transistor. Indeed, Stride only discloses that using bi-layer graphene in this manner “may be useful in making tuneable infrared lasers and detectors.” Stride, 27:28–29 (emphasis added). Moreover, such explanation is especially necessary here because the Examiner’s rejection of dependent claim 15 proposes using bi-layer graphene to provide a “zero-gap semiconductor.” Final Act. 5. Thus, on this appeal record, it is manifestly unclear why the skilled artisan would have sought to engineer “significant semiconductor gaps” in one instance (claim 4; Ans. 4) and would have likewise been motivated to engineer a “zero-gap semiconductor” in another (claim 15; Final Act. 5). For these reasons, we do not sustain the Examiner’s rejection of claim 4, or claims 2, 3, and 5–19 dependent therefrom. CONCLUSION The Examiner’s rejections are reversed. Appeal 2020-003284 Application 15/321,296 5 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2–5, 8, 15, 18, 19 103 Biener, Stride 2–5, 8, 15, 18, 19 6 103 Biener, Stride, Gordon 6 7 103 Biener, Stride, Gordon, Gordon ʼ539 7 9, 10, 13 103 Biener, Stride, Cheng 9, 10, 13 11 103 Biener, Stride, Andersson 11 12 Biener, Stride, Kivioja 12 14 Biener, Stride, Worsely 14 16 Biener, Stride, Slepian 16 17 Biener, Stride, Ahn 17 Overall Outcome 2–19 REVERSED