Ex Parte Dai et al

Patent Trial and Appeal Board

Aug 11, 2017

12508754 (P.T.A.B. Aug. 11, 2017)

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.
12/508,754 07/24/2009 Hongjie Dai 3815.60-1 8603
24353 7590 08/15/2017
BOZICEVIC, FIELD & FRANCIS LLP
Bozicevic, Field & Francis
201 REDWOOD SHORES PARKWAY
SUITE 200
REDWOOD CITY, CA 94065
EXAMINER
MILLER, DANIEL H
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
08/15/2017 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):
docket@bozpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HONGJIE DAI, XIAOLIN LI, and XIAOMING SUN
Appeal 2016-004131
Application 12/508,754
Technology Center 1700
Before LINDA M. GAUDETTE, JULIA HEANEY, and JEFFREY R. SNAY,
Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
1 This Decision includes citations to the following documents: Specification filed
July 24, 2009 (“Spec.”), as amended on Aug. 12, 2014; Final Office Action mailed
Dec. 4, 2014 (“Final”); Appeal Brief filed Aug. 12, 2015 (“Br.”); and Examiner’s
Answer mailed Jan. 4, 2016 (“Ans.”).
Appeal 2016-004131
Application 12/508,754
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision
finally rejecting claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The invention relates to a method of making graphene materials. See Br.,
App’x A, Claims 1—18. The Specification defines “graphene material” as
a material which is a one-atom-thick planar sheet of sp2-bonded
carbon atoms that are densely packed in a honeycomb crystal lattice,
and, further, contains an intact ring structure of carbon atoms and
aromatic bonds throughout at least a majority of the interior sheet and
lacks significant oxidation modification of the carbon atoms..........
Spec. 139. The Specification further states that: “As used here, the term
‘graphene material’ includes not only graphene sheets and ribbons, but
‘polyphenylene molecules,’ i.e., polyaromatic carbon molecules having at least two
fused benzene rings, further having additional benzyl groups which may be fused
or dendrimeric.” Id. The inventive methods utilize a graphitic material as a
starting material. See Br., App’x A, Claims 1 and 7.3 The Specification defines
“graphitic material” as “a material such as graphite, graphene ribbons, graphene
molecules or other polyaromatic/conjugated molecules, which is in aggregated or
insoluble form[,] ... as opposed to the resultant graphene material.” Spec. 138.
The Specification explains that an important aspect of the inventive method is that
“it enables one to make single species of molecules dispersed in solvents, using
starting materials that are insoluble. This dispersion and solubility are key
technical improvements. Aggregated ribbons, molecules and graphene have been
previously known, but not in functionalized, stable suspensions (referred to
2 Appellants identify the real party in interest as The Board of Trustees of the
Leland Stanford Junior University. Br. 2.
3 Claims 1 and 7 are the only independent claims on appeal.
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Application 12/508,754
also as solutions).” Id. 116. Claim 1, reproduced below, is illustrative of the
claimed method:
1. A method of making a graphene material in the form of a
plurality of sheets dispersed in solution, which sheets are a single
atom thick and which sheets further contain functional groups, said
method comprising the steps of:
(a) providing as a starting material a graphitic material in
aggregated or insoluble form;
(b) intercalating the graphitic material from step (a) with an
acid;
(c) forming a suspension of intercalated graphitic material
from step (b) in a liquid medium;
(d) agitating the suspension from step (c) to form dispersed
sheets of graphene material reacted with the acid to form said
functional groups at edges of said dispersed sheets but not on internal
aromatic rings; and
(e) recovering said graphene material as separate sheets from
a solution formed in step (d), wherein said material is stable in the
solution.
Br., App’x A.
The Examiner maintains the following rejections on appeal:
1. Claims 5 and 8 under 35 U.S.C. § 112, second paragraph, as
indefinite;
2. Claims 1—3, 5—9, and 11—134 under 35 U.S.C. § 103(a) as obvious
over Jang et al. (U.S. 2005/0271574 Al, pub. Dec. 8, 2005 (“Jang”));
4 Although claims 4 and 7—13 are included in this ground of rejection, the
Examiner does not discuss these claims in the body of the rejection. The
Examiner, therefore, fails to satisfy the Patent Office’s procedural burden under 35
U.S.C. § 132 and 37 C.F.R. § 1.104(a)(2) to notify the applicant of the reasons for
its rejection of claims 4 and 7—13 as obvious over Jang alone. See In re Jung, 637
F.3d 1356, 1362 (Fed. Cir. 2011).
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Appeal 2016-004131
Application 12/508,754
3. Claims 4 and 7—13 under 35 U.S.C. § 103(a) as obvious over Jang in
view of Olstowski (US 3,527,856, issued Sep. 8, 1970);
4. Claims 14 and 15 under 35 U.S.C. § 103(a) as obvious over Jang in
view of Olstowski and Watanabe et al. (US 2006/0134326 Al, pub. Jun. 22, 2006
(“Watanabe”));
5. Claims 16—18 under 35 U.S.C. § 103(a) as obvious over Jang in view
of Olstowski, Watanabe, and Kam {Biological Application of Carbon Nanotubes\
Paving the way to nanotube based delivery vehicles and therapies for living
systems (2006)); and
6. Claims 16—18 under 35 U.S.C. § 103(a) as obvious over Jang in view
of Olstowski, Watanabe, and Kam {Carbon Nanotubes as Multifunctional
Biological Transporters and Near-infrared Agents for Selective Cancer Cell
Destruction (PNAS) (2005)).
Rejection of claims 5 and 8 under 35 U.S.C. § 112,
second paragraph, as indefinite
Claim 5 recites: “The method of claim 1 where the graphene material is one
of dispersed sheets, ribbons or polyphenylene molecules.” Br., App’x A. Claim 8
depends from independent claim 7, and similarly recites a graphene material
comprising a polyphenylene molecule. See id.
The Examiner contends claims 5 and 8 are indefinite because polyphenylene
is not a graphitic molecule. Final 2. Appellants, in response, argue the claims are
not indefinite because one of ordinary skill in the art would understand from the
above-quoted definitions in paragraphs 38 and 39 of the Specification that “both
graphitic and graphene materials may comprise polyphenylene molecules,
depending on whether they are in aggregated form or recovered from solution as a
single layer graphene material.” Br. 6. In the Response to Argument section of the
Answer, the Examiner acknowledges “the appellant’s right to be [its] own
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Appeal 2016-004131
Application 12/508,754
lexicographer,” but contends such right does not allow an appellant to provide a
definition that is contrary to its plain meaning. Ans. 9.
[W]hen the USPTO has initially issued a well-grounded
rejection that identifies ways in which language in a claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear in
describing and defining the claimed invention, and thereafter the
applicant fails to provide a satisfactory response, the USPTO can
properly reject the claim as failing to meet the statutory requirements
of § 112[, second paragraph].
In re Packard, 75 F.3d 1307, 1311 (Fed. Cir. 2014). Appellants have persuasively
argued that the Examiner failed to meet this initial burden to show that claims 5
and 8 are unclear in describing and defining the claimed invention. See Br. 5—6.
As an initial matter, we note the Examiner’s statement that an applicant
cannot define a term in a manner that is contrary to its plain meaning is not
supported by the case law. See Toshiba Corp. v. Imation Corp., 681 F.3d 1356,
1369 (Fed. Cir. 2012) (“Absent disclaimer or lexicography, the plain meaning of
the claim controls.” (emphasis added) (citation omitted)). Moreover, the Examiner
has not explained adequately why one of ordinary skill in the art would not
understand the scope of claims 5 and 8 when read in light of the Specification, in
particular, the express definitions of graphitic and graphene materials provided
therein. See BJServs. Co. v. Halliburton Energy Servs., 338 F.3d 1368, 1372 (Fed.
Cir. 2003) (quoting Union Pac. Res. Co. v. Chesapeake Energy Corp., 236 F.2d
684, 692 (Fed. Cir. 2001) (“The definiteness inquiry focuses on whether those
skilled in the art would understand the scope of the claim when the claim is read in
light of the rest of the specification.”)).
Accordingly, we do not sustain the rejection of claims 5 and 8 under 35
U.S.C. § 112, second paragraph.
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Appeal 2016-004131
Application 12/508,754
Rejections of claims 1—18 under 35 U.S.C. § 103
The Examiner’s rejections of claims 1—18 are based on findings that (1)
Jang’s step of intercalating a material with an acid meets the claims 1 and 7 steps
of intercalating a graphitic material with an acid and forming a suspension of the
intercalated graphitic material in a liquid medium (Final 3—4), and (2) Jang’s step
of mechanical attrition (e.g., pulverizing, grinding and milling) is an “equivalent
process[] to agitation and can or do[es] occur in solution,” thereby necessarily
forming dispersed sheets of graphene (Ans. 10; see also Final 3 4).
Appellants argue the evidence does not support the Examiner’s finding that
Jang’s intercalation and mechanical attrition steps either meet the limitations of, or
are known equivalents to, the claimed steps of forming a suspension and agitating
the suspension (see Br., Claims App’x (claims 1 and 7)). Id. at 9-10; see also
Spec. Ill (discussing Jang’s method). Appellants argue Jang discloses preparing
nano-scaled graphene plates, but there is no teaching that the method produces
sheets that are a single atom thick as required by the claims. Br. 7—8.
The Examiner bears the initial burden of presenting a prima facie case of
obviousness. See In re Glaug, 283 F.3d 1335, 1338 (Fed. Cir. 2002). We agree
with Appellants that the Examiner has not met this burden. First, the Examiner has
not identified sufficient evidence to support a finding that Jang expressly describes
forming and then agitating a suspension as recited in claims 1 and 7. In this
regard, we note the Examiner has not explained how the acid used in Jang’s
intercalation step reasonably would have been understood as also meeting the
recited limitation of a liquid medium used in forming a suspension. Nor has the
Examiner identified evidence to support a finding that the mechanical attrition
process described in Jang would have been understood as occurring in solution.
Second, even if Jang’s process necessarily produces graphene sheets that are a
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Application 12/508,754
single atom thick as contended by the Examiner, the Examiner has not identified
evidence to support a finding that Jang’s mechanical attrition step and Appellants’
claimed step of agitating a suspension in a liquid medium were known equivalents,
such that the ordinary artisan reasonably would have expected the same product to
be produced by substituting an agitation step as used in Appellants’ process for
Jang’s attrition step.
Accordingly, we do not sustain the rejections of claims 1—18 under 35
U.S.C. § 103(a).
For the above-stated reasons, the Examiner’s decision to reject claims 1—18
is:
REVERSED
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