Zhaohui Zhong et al.

Patent Trials and Appeals Board

May 12, 2020

13225135 - (D) (P.T.A.B. May. 12, 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.
13/225,135 09/02/2011 Zhaohui Zhong 7935-3029-2 1894
29318 7590 05/12/2020
JAMES D. STEVENS
REISING ETHINGTON P.C.
755 W. BIG BEAVER RD.
SUITE 1850
TROY, MI 48084
EXAMINER
MILLER, DANIEL H
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
05/12/2020 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):
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ZHAOHUI ZHONG, SEUNGHYUN LEE,
and KYUNGHOON LEE

Appeal 2019-005855
Application 13/225,135
Technology Center 1700
____________

Before CATHERINE Q. TIMM, MICHAEL P. COLAIANNI, and
MICHAEL G. McMANUS, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8, 13–18, 22–24, 30, and 32–42. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART and enter NEW GROUNDS OF REJECTION
pursuant to 37 CFR § 41.50(b).

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 The Regents
of the University of Michigan. Appeal Br. 2.
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Appellant’s invention is directed to methods of producing graphene
(Spec. ¶ 1; Claims 1 and 13).
Claims 1 and 13 are representative of the subject matter on appeal:
1. A method of directly synthesizing a uniform multilayer graphene film by
chemical vapor deposition, wherein the uniform multilayer graphene film is
uniform bilayer graphene in which a major and continuous portion of the film
has exactly and only two graphene layers when the chemical vapor deposition
ends.
13. A method of producing multilayer graphene, comprising the steps of:
(a) placing a substrate having a metal surface in a reaction chamber of
a furnace;
(b) flowing H2 gas in the reaction chamber;
(c) increasing the temperature in the reaction chamber to a desired level;
(d) after the temperature in the reaction chamber reaches the desired
level, ceasing flow of the H2 gas, and flowing reaction gas in the reaction
chamber for a desired time, wherein the reaction gas begins flowing in the
reaction chamber after step (c) and after the flow of H2 gas is ceased; and
(e) after the desired time, decreasing the temperature in the reaction
chamber at a controlled rate.
Appellant appeals the following rejections:
1. Claim 1 is rejected under 35 U.S.C. § 102(b) as anticipated by
or, in the alternative, under 35 U.S.C. § 103(a) as obvious over
Kim (Kim, Keun Soo, et al. Large-Scale Pattern Growth of
Graphene Films for Stretchable Transparent Electrodes. Nature
457, no. 7230 (Feb 05, 2009): 706–10).
2. Claims 1–8, 13–18, 22–24, 30, and 32–42 are rejected under
35 U.S.C. § 103(a) as unpatentable over Kim in view of
Veerasamy (US 2011/0030772 Al published Feb. 10, 2011).

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FINDINGS OF FACT & ANALYSIS
Rejection (1)
The Examiner’s findings and conclusions regarding the §§ 102(b)/
103 rejections of claim 1 over Kim are located on page 2 of the Final Action.
The Examiner finds that Kim provides a bilayer of graphene by growing a
chemical vapor deposition (CVD) formed graphene bilayer (Final Act. 2).
The Examiner finds that Kim teaches that the size and thickness of the
graphene layers can be controlled by the thickness of the catalyst layer and
the time of deposition (Final Act. 2). The Examiner determines that
alternatively, it would have been obvious to modify Kim’s catalyst layer
thickness and deposition time to produce bilayer graphene (Final Act. 2).
Appellant argues that the Examiner has not established that Kim
teaches that the graphene layer is a uniform bilayer of graphene wherein a
major and continuous portion of the film has exactly and only two graphene
layers when the chemical vapor deposition ends (Appeal Br. 9). Appellant
contends that Kim teaches that the film includes various numbers of
graphene layers from monolayers to more than ten layers of graphene
(Appeal Br. 9). Regarding the § 103 rejection, Appellant contends that there
is no reasonable expectation of success in arriving at the uniformity in the
number of graphene layers recited in claim 1 (Appeal Br. 10).
In order to address Appellant’s arguments we must begin by
construing claim 1. We find that Appellant defines “uniform” in the
Specification as “consistency throughout the structure with respect to the
number of graphene layers.” (Spec. ¶ 46). Appellant describes that a
uniform multilayer graphene structure is characterized by significant and
continuous portions of the structure having the same number of graphene
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layers (Spec. ¶ 46). Appellant defines a major portion of the film as being
50% or more of the graphene structure (Spec. ¶ 46). Appellant defines film
or sheet as a graphene structure having any number of graphene layers, from
a single layer to two or more layers (Spec. ¶ 48). Appellant describes that
the film and sheet do not imply any particular dimensions other than general
dimensional relationships inherent with graphene (Spec. ¶ 48).
With these claim term definitions in mind, we construe claim 1 as
requiring graphene structures having exactly and only 2 layers of graphene
over a major and continuous portion of the graphene structures (i.e., film).
We find that the term film as defined in the Specification does not require
the “film” have any particular dimensions. Stated differently, the broadest
reasonable interpretation of claim 1 includes a graphene structure of any size
having exactly and only 2 graphene layers over a major and continuous
portion of the graphene structure (i.e., film).
With this claim 1 construction in mind, we now address the
§§ 102/103 rejections over Kim. Kim shows in Figure 2d that the graphene
formed has a range of layers from 1 layer to 10 layers (Kim 706, col. 2).
Kim teaches that “bilayer structures” predominate the Figure 2 images. Id.
Kim teaches controlling the average number of graphene layers, domain
size, and substrate coverage can be controlled by changing nickel thickness
and growth time during the growth process (Kim 706, col. 2). Kim further
discloses that nickel layers thinner than 300 nm yield predominately mono-
and bilayer graphene film for microelectronic device applications (Kim 706,
col. 2). Kim teaches that the number of graphene layers can be controlled by
varying the thickness of the catalytic metals, the growth time and/or the
ultraviolet treatment time (Kim 709, col. 2).
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Kim teaches that the bilayer structures “predominate” for the sample
shown in Figure 2d (Kim 706). The broadest reasonable interpretation of
claim 1 includes Kim’s bilayer structures. Specifically, the bilayer
structures of claim 1 are a multilayer graphene film (i.e., a graphene
structure) having exactly and only 2 layers over a major and continuous
portion of the bilayer portion of the bilayer graphene structures (i.e., film).
Indeed, over the bilayer structure portion in Kim there would be only 2
layers of graphene and therefore the 2 layers would constitute a major (i.e.,
more than 50%) part of the bilayer structure. Moreover, two layers of
graphene would be a continuous portion of the bilayer structure (i.e., film).
Claim 1’s film when read in light of the Specification includes any and all
dimensions for the size of the film (Spec. ¶ 46). Kim’s bilayer structures are
uniform over a major and continuous portion of the bilayer graphene
structure. Claim 1 does not require that the bilayer graphene film (i.e.,
graphene structure) extend over the entire surface of the item being coated
by chemical vapor deposition.
Regarding the § 103 rejection, we find Kim provides a reasonable
expectation of success in forming a uniform bilayer graphene film (i.e., a
graphene structure) having a major and continuous portion having exactly
and only two graphene layers based on the broadest reasonable interpretation
of claim 1 discussed above. Kim teaches forming bilayer structures. Kim’s
bilayer structures would have a major and continuous portion having exactly
and only two graphene layers when chemical vapor deposition ends. As
noted above, film as interpreted in light of the Specification does not require
any size or dimension for the formed film (Spec. ¶ 46).
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On this record and for the above reasons, we affirm the Examiner’s
§§ 102(b)/103(a) rejections of claim 1 over Kim.
Rejection (2)
The Examiner’s rejection of claims 1, 13, 17, and 18 over Kim in
view of Veerasamy is located on pages 3 to 8 of the Final Action. The
Examiner relies on Kim’s teachings as noted above in our analysis of the
rejection of claim 1 under §§ 102(b)/103(a) over Kim. The Examiner finds
that claim 1 is not clear as to what defines a “major portion” (Final Act. 3).
The Examiner finds that Veerasamy teaches a uniform thickness graphene
film grown by a chemical vapor deposition (CVD) process on a metal
substrate (Final Act. 4). The Examiner concludes that it would have been
obvious to provide the uniformity desired to Kim’s layers (Final Act. 4).
Appellant argues that the Examiner has not addressed the claim 1
requirement that uniform bilayer of graphene has a major and continuous
portion that has exactly and only 2 layers of graphene after chemical vapor
deposition (Appeal Br. 10). Appellant contends that major portion is defined
in the Specification at paragraph 46 as 50% or more (Appeal Br. 11).
Appellant contends that claim 1 requires direct synthesis of the graphene
layers, which Veerasamy does not teach (Appeal Br. 12). Veerasamy
teaches forming graphene layers and then etching away or exfoliating the
layers to arrive at the desired number of graphene layers (Appeal Br. 12).
Appellant argues that Kim’s graphene layer is not uniform within the
meaning of claim 1 (Appeal Br. 12).
We disagree with Appellant based upon the broadest reasonable
interpretation of claim 1 noted above in our §§ 102(b)/103(a) analysis. As
noted above, we affirm the Examiner’s § 103(a) rejection over Kim alone.
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We find that the Examiner’s reliance on Veerasamy for the teaching that it
would have suggested desirability of forming a uniform layer of graphene to
be unnecessary in light of Kim’s teachings and the broadest reasonable
interpretation of claim 1. We affirm the Examiner’s § 103(a) rejection of
claim 1 over Kim alone.
We address the rejection of claims 30, 32-36 argued by Appellant.
Claims 30, and 32–36 all depend from claim 1 and are rejected under § 103
over the combination of Kim and Veerasamy (Final Act. 4, 7). Appellant
contends that the rejection of these claims should be reversed because the
Examiner’s rejection does not contain an articulated rejection of these claims
(Appeal Br. 16–18). We agree.
The Examiner includes claim 30 in the statement of rejection, but does
not include an analysis of claim 30’s subject matter in the body of the
rejection (Final Act. 3–8). Regarding claims 32 to 36, the Examiner lumps
the claims together and states that the same reasoning regarding Veerasamy
applies to the subject matter of these claims (Final Act. 4). The Examiner
fails to establish a prima facie case of obviousness in not addressing
adequately the subject matter of these claims. The Examiner has not
dispensed with the initial burden of establishing a prima facie case. Rather
the Examiner’s failure to articulate clearly the rejection with regard to these
claims prevents Appellant from recognizing and seeking to counter the
grounds of the rejection. In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
We reverse the § 103(a) rejection of claims 30 and 32–36 over Kim in view
of Veerasamy.
Claim 37 depends from claim 1 and claim 38 depends from claim 37.
Both of these claims are rejected under § 103(a) over Kim in view of
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Veerasamy (Final Act. 3, 7). Regarding claim 38, the Examiner finds that
“claims to relative size or dimensions are not indicative of patentability
wherein scaling up is possible.” (Final Act. 7). Regarding claim 37, the
Examiner finds that the film is considered to have at least two dimensions on
a macroscale. (Final Act. 7). Appellant does not dispute these findings or
conclusions (Appeal Br. & Reply Br. generally). Therefore, we affirm the
Examiner’s § 103(a) rejection of these claims over Kim in view of
Veerasamy.

Claims 2–8, 13–17 and 39–42
Appellant argues with regard to claim 2 that the Examiner ignored the
requirement in the claim that flowing the reactant gas occurs after the
temperature reaches a desired level (Appeal Br. 13). Regarding independent
claims 13 and 17, Appellant argues that Kim does not teach ceasing the
hydrogen gas flow before flowing the reactant gas into the reaction chamber
(Appeal Br. 22, 24). Appellant contends that Veerasamy supplies the
reactant gas before heating the reaction chamber and hydrogen gas is
supplied during the heating (Appeal Br. 22). Appellant contends that there
is no reason to modify Kim’s process with arrive at the subject matter of
claim 13 because the hydrogen gas is supplied during heating in each
reference (Appeal Br. 22–23). We agree.
The Examiner responds that the claims do not require that only
hydrogen gas is used (Ans. 11). The Examiner finds that the claims use the
open-ended transitional claim language “comprising” and therefore mixed
hydrogen/hydrocarbon gas used in the prior art are not excluded (Ans. 11).
However, the Examiner does not explain why it would have been obvious to
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cease the flow of hydrogen gas after the temperature in the reaction chamber
reaches a desired level. In other words, even if the reactant gas may include
hydrogen gas, that finding does not address why it would have been obvious
to flow hydrogen gas into the reaction chamber before heating and ceasing
hydrogen gas flow once the desired temperature is reached as required by
the method of claims 13 and 17.
Regarding claim 2, the Examiner has not established that, based on
the teachings of Kim and Veerasamy, it would have been obvious to heat the
reaction chamber to the desired temperature and then supply the reactant gas
to the heated reaction chamber. Veerasamy teaches supplying the reactant
gas and then heating the reactant gas and chamber (¶ 43). Kim teaches
heating the chamber and adding the reactant gas that contains hydrogen gas
mixed into it (Kim 706). The Examiner has not sufficiently explained how
these seemingly disparate teachings would have been combined.
Additionally, the Examiner has not established that Kim teaches supplying
the reactant gas without hydrogen gas or at a reactant chamber pressure of
less than 0.5 Torr as recited in claim 2.
Regarding claim 39, which depends from claim 1, Appellant argues
that claim 39 includes a particular order of the process steps by virtue of the
“after” language in the claim (Appeal Br. 18). Appellant argues that Kim
and Veerasamy teach away from the subject matter of claim 39 (Appeal Br.
19). Appellant contends that Kim uses argon as a conditioning gas, but that
would not satisfy the claim 39 recitation that the conditioning gas “is stable
up to and including at least the deposition temperature and is suitable to
reduce or deoxidize the metal surface without introducing impurities”
(Appeal Br. 19). Appellant argues that the Examiner has not shown where
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Kim and Veerasamy would have suggested using a conditioning gas within
the meaning of the claim that is used during the heating step but ceased prior
to deposition (Appeal Br. 19–20). We agree.
The Examiner does not address the limitation in claim 39 with any
degree of specificity (Final Act. 6). The Examiner simply states: “regarding
claim . . . 39 . . ., the process is a CVD process” (Final Act. 6). The
Examiner has not established that the order of steps recited in claim 39
would have been obvious over the combined teachings of Kim and
Veerasamy.
Claims 3–8, 14–16, and 40–42 depend from either claims 2, 13, 17, or
39. On this record and for the above reasons, we reverse the Examiner’s
§ 103 rejection of claims 2–8, 13–17, and 39–42 over Kim and Veerasamy.
Claim 18
Claim 18 is an independent claim. Appellant argues that the
Examiner has not established that Kim and Veerasamy teach or would have
suggested a graphene film whose layers are separately synthesized and then
stacked as recited in claim 18 (Appeal Br. 25). Appellant argues that claim
18 requires direct synthesis of uniform bilayer graphene by CVD which is
not taught by Veerasamy (Appeal Br. 25–26).
The Examiner finds that Veerasamy teaches in paragraph 47 stacked
layers of graphene (Final Act. 6). The Examiner does not meaningfully
respond to these arguments in the Answer (Answer 10–13).
The Examiner’s rejection fails to address specifically the steps
required by method claim 18. In doing so, the Examiner fails to provide a
prima facie case of obviousness. Jung, 637 F.3d at 1362. On this record, we
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reverse the Examiner’s § 103 rejection of claims 18 and 22–24 over Kim in
view of Veerasamy.

New Grounds of Rejection

Indefiniteness
We reject claims 1, 30, and 32–38 under 35 U.S.C. § 112, second
paragraph, as failing to point out and particularly claim the subject matter
which Appellant regards as the invention.
Claim 1 recites in the preamble that it is directed to a method.
However, the claim fails to recite any method steps that would constitute the
method. Instead the claim merely recites the resulting product of a chemical
vapor deposition. The absence of the required method steps renders the
claim indefinite because the claim fails to particularly point out and
distinctly claim the method, i.e., the act or series of acts, Appellant regards
as the invention. See 35 U.S.C. §112, second paragraph (“The specification
shall conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the applicant regards as his
invention.”); Gottschalk v. Benson, 409 U.S. 63, 70 (1972) (“A process is a
mode of treatment of certain materials to produce a given result. It is an act,
or a series of acts, performed upon the subject-matter to be transformed and
reduced to a different state or thing.” (emphasis added) (quoting Cochrane v.
Deener, 94 U.S. 780, 788 (1876))). Claims 30 and 32–38 are indefinite by
virtue of their dependency on claim 1 and their failure to recite any method
steps that would cure the indefiniteness issue.

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Scope of Enablement
We reject claims 1, 30, and 32–38 under 35 U.S.C. § 112, first
paragraph, because the specification, while being enabling for using the
specific steps to achieve a uniform, bilayer graphene film, does not
reasonably enable using all chemical vapor deposition processes to achieve a
uniform, bilayer graphene film. The specification does not enable any
person skilled in the art to which it pertains, or with which it is most nearly
connected, to use the invention commensurate in scope with the claim.
In the present case, claim 1 recites that chemical vapor deposition is
used to directly synthesize a uniform bilayer graphene film having a major
and continuous portion of the film that has exactly and only two graphene
layers when the chemical vapor deposition ends. The Specification,
however, discloses that not all chemical vapor deposition processes are able
to achieve a uniform film (Spec. ¶¶ 62, 88, 91). Rather, the Specification
discloses a particular process that may be used to synthesize the bilayer or
multilayer graphene (Spec. ¶¶ 52–61). In other words, the scope of claim 1
is not enabled for using all chemical vapor deposition processes to achieve
the uniform bilayer graphene recited in claim 1.

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CONCLUSION

Claims
Rejected
35
U.S.C.
§
Reference(s)
/Basis
Affirmed Reversed New
Ground
1 102 Kim 1
1 103 Kim 1
1–8, 13–
18, 22–24,
30, 32–42
103 Kim,
Veerasamy
1, 37, 38 2–8, 13–
18, 22–
24, 30,
32–36,
39–42

1, 30, 32–
38
112, ¶ 2 Indefiniteness 1, 30,
32–38
1, 30, 32–
38
112, ¶ 1 Enablement 1, 30,
32–38
Overall
Outcome
1, 37, 38 2–8, 13–
18, 22–
24, 30,
32–36,
39–42
1, 30,
32–38
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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.

AFFIRMED IN PART; 37 C.F.R. § 41.50(b)