Ex Parte SHIN et al

Patent Trial and Appeal Board

Aug 22, 2018

13465488 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/465,488 05/07/2012 Hyeon-jin SHIN
23413 7590 08/24/2018
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
YPL1034US 7402
EXAMINER
BURKHART, ELIZABETH A
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
08/24/2018 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HYEON-JIN SHIN, JAE-YOUNG CHOI, YUN-SUNG WOO, and
SEON-MI YOON
Appeal2017-010536
Application 13/465,488
Technology Center 1700
Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
SHELDON M. McGEE, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter "Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner's final decision to reject claims 1, 3-8,
10, 13-16, and 21. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellants identify the real party in interest as "Samsung Electronics
Co." (Appeal Brief filed March 2, 2017 (hereinafter "Appeal Br.") 2).
2 Appeal Br. 5-11; Reply Brief filed August 10, 2017 (hereinafter "Reply
Br.") 2-7; Final Office Action entered August 5, 2016 (hereinafter "Final
Act.") 2---6; Examiner's Answer entered June 12, 2017 (hereinafter "Ans.")
3-8.
Appeal2017-010536
Application 13/465,488
I. BACKGROUND
The subject matter on appeal relates to a method for preparing
crystalline graphene (Specification filed May 7, 2012 (hereinafter "Spec.")
,r,r 6-7). Representative claim 1 is reproduced from the Claims Appendix to
the Appeal Brief (Appeal Br. 13), with key limitations emphasized, as
follows:
1. A method of preparing crystalline graphene, the
method comprising:
performing a first thermal treatment in a reducing
atmosphere including supplying heat to an inorganic substrate in
a reactor prior to introducing a vapor carbon supply source into
the reactor;
introducing the vapor carbon supply source into the
reactor during the first thermal treatment to form activated
carbon;
binding the activated carbon on the inorganic substrate to
grow a first crystalline graphene having a first crystallinity;
forming a graphitization catalyst layer on the first
crystalline graphene grown on the inorganic substrate;
performing a second thermal treatment on the inorganic
substrate with the first crystalline graphene and graphitization
catalyst layer thereon such that the first crystallinity of the first
crystalline graphene is increased to form a second crystalline
graphene having a second crystallinity, and
removing the graphitization catalyst layer to obtain a
graphene-on-substrate including the inorganic substrate and
the second crystalline graphene grown directly on the
inorganic substrate;
wherein the reducing atmosphere comprises hydrogen gas,
ammonia gas, or a mixture of hydrogen gas and ammonia gas,
and
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Application 13/465,488
wherein the second crystallinity of the second crystalline
graphene is higher than the first crystallinity of the first
crystalline graphene.
II. REJECTION ON APPEAL
On appeal, the Examiner maintains a final rejection under pre-AIA 35
U.S.C. § I03(a) of claims 1, 3-8, 10, 13-16, and 21 as unpatentable over
Okai et al. 3 (hereinafter "Okai") in view of Choi et al. 4 (hereinafter "Choi")
and Colombo et al. 5 (hereinafter "Colombo") (Ans. 3-8; Final Act. 2---6).
III. DISCUSSION
The Appellants rely on the same arguments for all claims on appeal
(Appeal Br. 5-11). Therefore, we confine our discussion to claim 1, which
we select as representative pursuant to 37 C.F.R. § 4I.37(c)(l)(iv). As
provided by this rule, claims 3-8, 10, 13-16, and 21 stand or fall with claim
1.
The Examiner finds that Okai describes a method for preparing
crystalline graphene including most of the limitations recited in claim 1
(Ans. 3--4). The Examiner finds two differences between Okai's method and
the method as recited in claim 1. First, the Examiner finds that although
Okai describes a first thermal heat treatment step, it does not describe
performing the first heat treatment in a reducing atmosphere comprising
hydrogen and/or ammonia prior to introducing a vapor carbon supply source
(id.). Second, the Examiner also acknowledges that although Okai teaches a
3 US 2010/0200839 Al, published August 12, 2010.
4 US 2009/0110627 Al, published April 30, 2009.
5 US 2011/0091647 Al, published April 21, 2011.
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Application 13/465,488
second heat treatment step is performed, it does not teach using a
graphitization catalyst in that step (id. at 4). Regarding the first difference,
the Examiner finds that Colombo discloses "exposing a metal or dielectric
substrate to a first thermal treatment in a reducing atmosphere ( e.g.
hydrogen) prior to introducing vapor carbon supply source into the reactor
for full substrate coverage" (id.). Regarding the second difference, the
Examiner finds that "Choi discloses that a graphitization catalyst assists
carbon elements in binding to each other to form a planar hexagonal
structure [0063] and the carbon should contact the catalyst during a heat
treatment [0064 ]" (id.). Based on these findings, the Examiner concludes
(id. at 5):
It would have been obvious to one of ordinary skill in the
art at the time of invention by applicant[ s] to apply the
graphitization catalyst of Choi to the graphene and then perform
the second heat treatment of Okai in order to further improve
crystallinity of the graphene since the catalyst assists in
arrangement of the carbon atoms and to use the first thermal
treatment in a reducing atmosphere suggested by Colombo
during the process of Okai since it was suitable for preparing a
substrate for graphene growth and provides full substrate
coverage.
The Appellants do not contest the Examiner's combination of Okai
with Colombo (Appeal Br. 5-11). Rather, the Appellants contend that the
Examiner's combination of Okai and Choi is flawed because Okai does not
teach: (i) disposing a catalyst layer on the first crystalline graphene and then
heat treating it; and (ii) "removing the graphitization catalyst layer to obtain
a graphene-on-substrate including the inorganic substrate and the second
crystalline graphene grown directly on the inorganic substrate" as recited in
claim 1 (Appeal Br. 7). Specifically, the Appellants argue that although
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Choi teaches disposing a catalyst film on a substrate, "there is no indication
in Choi that the catalyst film can modify the crystallinity of an already
formed graphene layer disposed on the substrate and below the catalyst film"
(id. at 9; see also id. at 11 ). Furthermore, the Appellants argue that "[ w ]hile
Okai [sic, Choi] teaches removing the catalyst layer (See FIG. I of Okai [sic,
Choi]), the structure resulting from the combination of Okai with Choi
would not permit the removal of the catalyst layer without the destruction of
one or more of the graphene layers" (id.; see also id. at 10).
We have fully considered the Appellants' arguments but find them
insufficient to reveal any reversible error in the Examiner's rejection. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Okai describes a method for forming a graphene layer 103 on an
aluminum oxide film 102, which is provided on a silicon substrate 101,
comprising forming the graphene layer by depositing acetylene and nitrogen
carrier gas under chemical vapor deposition (CVD) conditions at 450-800°C
for 5---60 minutes and then accelerating crystal growth using a heat treatment
step (i.e., a graphene crystal growth step) in a non-oxidizing atmosphere
(such as vacuum, nitrogen, and argon) at 800-1,200°C for 0.5-1 hour (Okai
Fig. 1; ,r,r 57, 60---63). According to Okai, "the atomic layers of aluminum
oxide have some desirable thermodynamic effects on the nucleation and
crystal growth of the graphene layers" and "[i]n particular, observation of
the graphene layer on the single crystalline aluminum oxide ( a-alumina) c-
plane substrate suggested that all of the graphene crystal grains were aligned
in a specific geometric relationship with the crystal axes of the substrate"
(id. ,r,r 79-80). In addition, Okai teaches depositing multiple graphene
layers with specified inter-atomic-layer distances (id. ,r,r 14, 81 ).
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Choi teaches growing graphene in the presence of a graphitizing
catalyst using heat treatment at a temperature between 300-2,000°C to form
a graphene sheet having a uniform structure without defects (Choi ,r,r 53,
60-63, 66-69). According to Choi, "the graphitizing catalyst contacts the
carbon source and assists carbon elements supplied from the carbon source
to be bound to each other to form a planar hexagonal structure" (id. ,r 63),
which structure the Appellants disclose as being a crystalline structure
(Spec. ,r 58). Choi does not place any particular limitation on the material
on which the graphitizing catalyst may be disposed and suggests that it does
not have to be provided on the substrate (id. ,r,r 60-61 ).
Given that Okai's graphene crystal growth step (i.e., the growth step
using a heat treatment of 800-1,200°C) is intended to accelerate the growth
of or produce crystalline graphene, a person having ordinary skill in the art
would have been prompted to use Choi's graphitizing catalyst in Okai's
crystal growth step (i.e., a second heat treatment step) in order to provide a
crystal structure without defects as disclosed in Choi. KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.").
Although the Appellants are correct that Choi does not indicate the
graphitizing catalyst would increase the crystallinity of a previously-
deposited graphene (Appeal Br. 9), 6 Choi provides a motivation or reason to
6 In the Reply Brief, the Appellants argue that "the pure gaseous carbon
source disclosed by Choi cannot contact the first graphene layer disposed on
the substrate as required by Okai because this first graphene layer is bonded
by the substrate ( disclosed by Okai) and the catalyst layer (proposed by the
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use such a catalyst for Okai's second heat treatment step. The mere fact that
the Appellants may have potentially discovered an additional advantage,
which has not been demonstrated as unexpected by objective comparative
data, does not necessarily compel a conclusion of nonobviousness because
the motivation or reason need not be identical to that of the Appellants. In
re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). See also In re Wiseman,
596 F.2d 1019, 1023 (CCPA 1979) (rejecting the appellants' argument that
"a structure suggested by the prior art, and, hence, potentially in the
possession of the public, is patentable to them because it also possesses an
[i]nherent but hitherto unknown, function which they claim to have
discovered"); Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) ("The fact
that appellant has recognized another advantage which would flow naturally
from following the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise be obvious.").
The Appellants' argument that removal of the graphitizing catalyst
using an acid, as disclosed in Choi (Choi ,r 68; Fig. 1 ), would cause
destruction of the graphene layers is without merit as it is not supported by
objective evidence. The Appellants do not explain why acid could not react
with the graphitizing catalyst layer ( e.g., through the sides) while leaving
intact any graphene layer, as suggested in Choi's Figure 1. Moreover, the
Appellants' argument is inconsistent with their own disclosure, which
describes embodiments involving repeated second thermal treatment steps or
the production of graphite (multiple graphene layers), coupled with removal
Examiner based on the disclosure of Choi)" (Reply Br. 3). That argument
was not timely raised in the Appeal Brief and, in any event, is not supported
by any evidence. The Appellants provide no evidence on the molecular
sizes of the materials that would substantiate the argument.
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of the catalyst layer with an acid, as being within the scope of the invention
(Spec. ,r,r 67, 68, 72). To the extent that removal by acid does in fact pose a
problem, the Appellants' invention would also be subject to the same
drawback, and the Appellants demonstrate no discovery beyond what would
have been expected. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
For these reasons, we uphold the Examiner's rejection as maintained
against claim 1.
IV. SUMMARY
The Examiner's rejection under 35 U.S.C. § 103(a) of claims 1, 3-8,
10, 13-16, and 21 as unpatentable over Okai in view of Colombo and Choi
is sustained. Therefore, the Examiner's final decision to reject claims 1, 3-
8, 10, 13-16, and 21 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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