Cui, Tianhong et al.

Patent Trials and Appeals Board

Nov 15, 2019

14840694 - (D) (P.T.A.B. Nov. 15, 2019)

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.
14/840,694 08/31/2015 Tianhong Cui 1008-220US01/20150354 8486
131034 7590 11/15/2019
Shumaker & Sieffert, P.A./U of M
1625 Radio Drive, Suite 100
Woodbury, MN 55125
EXAMINER
MALLEY JR., DANIEL PATRICK
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
11/15/2019 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):
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIANHONG CUI and SHOTA SANDO
Appeal 2019-001323
Application 14/840,694
Technology Center 1700
Before JEFFREY B. ROBERTSON, MONTÉ T. SQUIRE, and BRIAN D.
RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–14. We have jurisdiction under
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 the Regents
of the University of Minnesota. Appeal Br. 3.
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CLAIMED SUBJECT MATTER2
The Specification explains that formaldehyde is a toxic and
carcinogenic chemical often used to make particle board and coatings.
Spec. ¶ 1. Appellant describes the invention as relating to an “economical
yet robust and highly sensitive formaldehyde sensor capable of providing a
quick response.” Spec. ¶ 3. Claim 1 is illustrative:
1. A formaldehyde sensitive assembly suitable for use in the
manufacture of a formaldehyde electrochemical sensor,
comprising formaldehyde dehydrogenase attached to a single
layer sheet of graphene.

REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Shimomura et al.
(“Shimomura”)
Hughes et al.
(“Hughes”)

US 2009/0008248 A1

US 2013/0053665 A1

Jan. 8, 2009

Feb. 28, 2013

Schedin, F., Geim, A., Morozov, S., Hill, E., Blake, P., Katsnelson, M. and
Novoselov, K. Detection of individual gas molecules adsorbed on
graphene. Nature Materials, 6, pp.652-655 (2007) (“Schedin”).

Marzuki, N., Bakar, F., Salleh, A., Heng, L., Yusof, N., and Siddiquee, S.
Development of electrochemical biosensor for formaldehyde determination
based on immobilized enzyme. Int’l J. of Electrochemical Sci., 7, pp. 6070–
6083, (2012) (“Marzuki”).

2 In this Decision, we refer to the Final Office Action dated Dec. 20, 2017
(“Final Act.”), the Appeal Brief filed July 3, 2018 (“Appeal Br.”), the
Examiner’s Answer dated Sept. 27, 2018 (“Ans.”), and the Reply Brief filed
Nov. 27, 2018 (“Reply Br.”).
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Majidi, R. & Karami, A. Adsorption of formaldehyde on graphene and
graphyne. Physica E: Low-dimensional Systems and Nanostructures, 59,
pp. 169–173, (2014) (“Majidi”).

REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 1, 2, and 4–9 under 35 U.S.C. § 103 as obvious over
Shimomura in view of Majidi. Ans. 4.
B. Claims 3, 10, and 14 under 35 U.S.C. § 103 as obvious over
Shimomura in view of Majidi and Hughes. Id. at 8, 12.
C. Claims 11 and 12 under 35 U.S.C. § 103 as obvious over Shimomura
in view of Majidi and Marzuki. Id. at 10.
D. Claim 13 under 35 U.S.C. § 103 as obvious over Shimomura in view
of Majidi and Schedin. Id. at 13–14.
E. Claim 13 under 35 U.S.C. § 112 as indefinite. Id. at 3.3

OPINION
Rejections A-D: Obviousness over Shimomura and Majidi. The
Examiner has the initial burden of establishing a prima facie case of
obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the

3 Although the Examiner addresses this Section 112 rejection first in the
Final Office Action (Final Act. 2), we address this rejection last so that our
ordering of the rejections is consistent with Appellant’s numbering. See
Appeal Br. 17 (referring to the Section 112 rejection as the “FIFTH
GROUND OF REJECTION”).
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Examiner must show that each and every limitation of the claim is disclosed
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. In re Fine,
837 F.2d 1071, 1074 (Fed. Cir. 1988); KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
To resolve the issues before us on appeal, we focus on the Examiner’s
findings and determinations that relate to the error Appellant identifies. The
Examiner rejects independent claims 1 and 4 as obvious over Shimomura in
view of Majidi. Ans. 4. These claims recite formaldehyde dehydrogenase
(“FALDH”) either “attached to a single layer sheet of graphene” (claim 1) or
at least partially coated on “a single sheet of graphene” (claim 4). The
Examiner finds that Shimomura teaches layers of carbon nanotubes partially
coated with an immobilized enzyme such as FALDH. Ans. 4. The
Examiner finds, however, that Shimomura does not teach FALDH attached
to a single layer sheet of graphene. Id. at 5. The Examiner finds that Majidi
teaches adsorption of formaldehyde on graphene and teaches application of
this property in high sensitivity sensors. Id. The Examiner determines that
“it would have been obvious to replace the carbon nanomaterial as taught by
Shimomura . . . with the carbon nanomaterial as disclosed by Majidi . . . as
Majidi et al. teaches that there is a potential application for a high sensitivity
formaldehyde sensor.” Id.; see also, e.g., id. at 21.
Appellant argues that the Examiner has not established that one of
ordinary skill in the art would have had a reason to modify the applied
references to arrive at the claimed subject matter. Appeal Br. 6. In
particular, Appellant emphasizes that Shimomura teaches that its enzyme
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(e.g., FALDH) is immobilized in the carbon nanotube layer. Id. at 8–9
(citing Shimomura, Abstract, ¶ 89). Appellant also explains that Majidi
teaches a detection mechanism different from Shimomura—namely, Majidi
teaches adsorption of formaldehyde on graphene without the use of an
enzyme such as FALDH. Appeal Br. 6–7. Appellant, thus, argues that
replacing Shimomura’s nanotubes with the graphene of Majidi would
change Shimormua’s principle of operation because the two references use
different methods of measuring formaldehyde. Id. at 9–10.
The preponderance of the evidence supports Appellant’s position. In
particular, Appellant correctly explains that Shimomura discourages
placement of enzymes on an outer layer such that the enzymes are applied to
a flat surface or are not immobilized. Appeal Br. 9. Shimomura teaches that
carbon nanotubes enable “higher concentration by a larger amount of
absorption in comparison” compared to use of a flat surface. Shimomura
¶ 11. Shimomura also teaches that it is desirable to include an
immobilization layer “to function as an outflow preventing section to
prevent the outflows of the enzymes 4 immobilized in the carbon nanotube
layer L.” Id. ¶ 92. Shimomura explains that it uses carbon nanotubes as
electrodes that serve to regenerate the immobilized enzymes. Id. at Fig. 5;
Reply Br. 6.
Because of Shimomura’s emphasis on the use of carbon nanotubes
and Majidi discloses direct adsorption of formaldehyde on graphene without
the use of enzyme (Majidi, Abstract), we do not agree with the Examiner
that a person of skill in the art would have had sufficient reason to substitute
the carbon nanotubes with the single sheet of graphene taught by Majidi.
Accordingly, we do not sustain the Examiner’s rejection of independent
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claims 1 and 4. Because the Examiner’s treatment of the dependent claims
do not cure the error addressed above, we also do not sustain the Examiner’s
rejection of those claims.
Rejection 5: Indefiniteness of Claim 13. The Examiner rejects claim
13 under 35 U.S.C. § 112 as indefinite. Ans. 3. During prosecution, “‘[a]
claim is indefinite when it contains words or phrases whose meaning is
unclear.’” Ex parte McAward, Appeal No. 2015-006416, slip op. at 11
(quoting In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014) (per curiam)).
Here, claim 13 depends from claim 4 and recites that “the graphene
layer is layer-by-layer self-assembled on a wafer.” Appeal Br. 21 (Claims
App.). The Examiner determines that the claim is unclear in view of claim
4’s recitations (Ans. 3); namely, claim 4 requires the formaldehyde
interactive material comprise “a single layer sheet of graphene at least
partially coated with immobilized formaldehyde dehydrogenase.” Ans. 3.
The Examiner states, “Applicant has already limited the graphene to be a
single layer sheet of graphene [as in claim 4], it is therefore unclear how
there can be multiple layers [as suggested by “layer-by-layer” assembly in
claim 13].” Id. at 19.
Appellant argues that claim 13 is not unclear because “layer-by-layer”
refers to an electrostatic self-assembly step that a person having ordinary
skill in the art would recognize. Appeal Br. 18.
Based on the present record, the Examiner has not adequately
explained why claim 13 is unclear. Appellant’s Specification indicates that
a “layer-by-layer” process could be used to assemble a device comprising a
single sheet of graphene. See Spec. ¶¶ 24, 34. The Examiner has not
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adequately explained why the “single sheet of graphene” and “layer-by-
layer” recitations are inconsistent. We, thus, do not sustain this rejection.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–9 103 Shimomura, Majidi 1, 2, 4–9
3, 10, 14 103 Shimomura, Majidi,
Hughes
3, 10, 14
11, 12 103 Shimomura, Majidi,
Marzuki
11, 12
13 103 Shimomura, Majidi,
Schedin
13
13 112 Definiteness 13
Overall
Outcome
1–14

REVERSED