2019005855 (P.T.A.B. May. 12, 2020)

Zhaohui Zhong et al.

Patent Trials and Appeals BoardMay 12, 2020

2019005855 (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): USPTOmail@gmx.com USPTOmail@reising.com stevens@reising.com 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. Appeal 2019-005855 Application 13/225,135 2 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). Appeal 2019-005855 Application 13/225,135 3 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 Appeal 2019-005855 Application 13/225,135 4 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). Appeal 2019-005855 Application 13/225,135 5 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). Appeal 2019-005855 Application 13/225,135 6 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. Appeal 2019-005855 Application 13/225,135 7 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 Appeal 2019-005855 Application 13/225,135 8 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 Appeal 2019-005855 Application 13/225,135 9 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 Appeal 2019-005855 Application 13/225,135 10 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 Appeal 2019-005855 Application 13/225,135 11 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. Appeal 2019-005855 Application 13/225,135 12 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. Appeal 2019-005855 Application 13/225,135 13 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 Appeal 2019-005855 Application 13/225,135 14 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)