Ex Parte Gilje

Patent Trial and Appeal Board

May 26, 2017

13659417 (P.T.A.B. May. 26, 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.
13/659,417 10/24/2012 S Scott Gilje NGC-356 DIV 5735
32205 7590 05/31/2017
Patti & Malvone Law Group, LLC
One North LaSalle St., 44th Floor
Chicago, IL 60602
EXAMINER
KREUTZER, COLIN WRIGHT
ART UNIT PAPER NUMBER
2882
NOTIFICATION DATE DELIVERY MODE
05/31/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte S. SCOTT GILJE
Appeal 2016-003654
Application 13/659,417
Technology Center 2800
Before MICHAEL P. COLAIANNI, DONNA M. PRAISS, and
MERRELL C. CASHION JR., Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-003654
Application 13/659,417
Appellant appeals under 35 U.S.C. § 134(a) the non-final Rejection of
claims 15, 17, 19-25, and 27. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
We AFFIRM.
Appellant’s invention is directed to an apparatus for producing
graphene from graphene oxide by using a light source (Spec. 11; claim 15).
Claim 15 is illustrative:
15. An apparatus, comprising:
a porous graphene oxide (GO) target;
a light source directed at the GO target;
wherein the light source is configured to emit a light pulse, directed at
the porous GO target, with sufficient power to initiate a deoxygenation
reaction in the porous GO target to transform the porous GO target to
graphene.
Appellant appeals the following rejections:
1. Claims 15, 17, and 20-23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Huang (US 2010/0221508 Al; Sept. 2, 2010) in
view of Wang (US 2010/0144904 Al; June 10, 2010).
2. Claims 19, 24, 25, and 27 are rejected 35 U.S.C. § 103(a) as
unpatentable over Huang.
Appellant argues claims 15, 23, and 27 only (App. Br. 6—9). The
rejection of dependent claims not separately argued will stand or fall with
our analysis of the rejection of claims 1 and 27.
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Appeal 2016-003654
Application 13/659,417
FINDINGS OF FACT & ANALYSIS
REJECTION (1): Claims 15 and 23
The Examiner finds that Huang teaches treating graphene oxide films
with a light source to produce graphene as recited in claim 15, except that
Huang does not teach to use a porous graphene oxide target (claim 15)
having a density between 5 mg/ml and 15 mg/ml (claim 23) (Ans. 2—3). The
Examiner finds that Wang teaches converting porous graphene oxide
aerogels having a density from 1 mg/ml to 20 mg/ml to graphene for use in
making sensors, thermoelectric devices, super capacitors, etc. {id. at 3). The
Examiner concludes that it would have been obvious to use Wang’s porous
graphene oxide material as the graphene oxide target in Huang because
Huang and Wang are each directed to making graphene for use in electrical
applications such as sensors, thermoelectric devices, and super capacitors
{id.).
Appellant argues that it would not have been obvious to combine the
teachings of Huang and Wang without the benefit of impermissible
hindsight (Br. 6). Appellant contends that there is no teaching in either
reference of reducing a porous graphene oxide using a light pulse as claimed
by Appellant {id. at 7). Appellant argues that porous means that the density
of the graphene oxide is between 5 mg/ml and 15 mg/ml as recited in claim
23 {id. at 7, 8). Appellant contends that the graphene oxide density is critical
to achieve the self-propagating reduction of the graphene oxide(/<7).
Appellant further argues that the Examiner’s rationale for combining
Huang’s and Wang’s teachings based upon the similarity of end use is not
motivation for making the combination {id. at 7).
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Appeal 2016-003654
Application 13/659,417
Appellant’s arguments are not persuasive because they attack the
references individually instead of addressing what the combined teachings of
Huang and Wang would have suggested to the ordinarily skilled artisan.
Wang teaches that it is desirable to use porous graphene oxide aerogels that
are strong and electrically conducting (Wang 111). The Examiner finds
Wang and Huang are manufacturing graphene materials for use in making
electrical devices (Ans. 3). While Appellant argues Wang teaches using a
conventional heat treatment to convert the graphene oxide aerogels into
graphene (Br. 6—7; Wang 122), Huang teaches the use of light treatment
provides an improvement over the conventional way of converting graphene
oxide to graphene (Huang | 5). In other words, the motivation for using
Huang’s light treatment apparatus to convert Wang’s porous graphene oxide
is based on the improvement provided by using Huang’s process to convert
the graphene oxide in forming materials for use in electrical applications.
Accordingly, it would have been obvious to use Huang’s improved process
of converting graphene oxide to graphene to convert Wang’s graphene oxide
to graphene because Wang’s graphene oxide is suitable for use in making
electrical devices.
With regard to the alleged criticality of the graphene density, the
Examiner finds that Wang teaches a range of graphene densities that
encompasses the claimed range. Appellant does not dispute the Examiner’s
finding. Appellant may argue that the densities are critical, but Appellant
does not argue that the densities yield unexpected results. Although
Appellant alleges that graphene oxide targets at densities less than 5 mg/ml
and greater than 50 mg/ml do not result in the desired reaction to convert the
graphene oxide target to graphene, Appellant does not dispute that Wang
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Appeal 2016-003654
Application 13/659,417
teaches a density range for the graphene oxide that encompasses the claimed
density range.
On this record, we affirm the Examiner’s § 103 rejection of claims 15,
17, and 20—23 over Huang in view of Wang.
REJECTION (2): Claim 27
Appellant argues that Huang does not teach enhancing deoxygenation
by adding a catalytic metal for oxygen scavenging and, thus, would not have
suggested claim 27 (Br. 9).
Appellant’s argument is unpersuasive because it fails to address the
Examiner’s official notice that silicon is a well-known substrate material
used in conventional photolithography (Ans. 5,9). The Examiner finds that
Huang teaches using a substrate but does not teach the material used as the
substrate {id. at 9). The Examiner concludes that it would have been
obvious to use silicon as the material for Huang’s substrate because silicon
is a well-known and widely used substrate material {id.). There is no dispute
that silicon is a catalytic metal within the meaning of the claim as construed
in light of the Specification {See Spec. Tflf 24, 26).
On this record, we affirm the Examiner’s § 103 rejection of claims 19,
24, 25, and 27 over Huang.
DECISION
The Examiner’s decision 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)(1).
AFFIRMED
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