Ex Parte Zhamu et al

Board of Patent Appeals and Interferences

Jul 18, 2012

11879680 (B.P.A.I. Jul. 18, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/879,680 07/19/2007 Aruna Zhamu 4616
7590 07/18/2012
Bor Z. Jang
9436 Parkside Drive
Centerville, OH 45458
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
07/18/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ARUNA ZHAMU, JINJUN SHI,
JOAN JANG, and BOR Z. JANG
__________

Appeal 2011-002839
Application 11/879,680
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/879,680

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Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-20, 23-26, and 29-42. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention is directed to a method of exfoliating and
separating graphite, graphite oxide and other laminar compounds to produce
nano-scaled platelets, particularly nano-scaled graphene platelets (NGPs)
with an average thickness of no more than 2 nm or 5 layers (i.e., 5 graphene
sheets) (Spec. 1:14-17).
Claim 1 is illustrative:
1. A method of producing ultra-thin, separated nano-
scaled platelets from a layered graphite material, said method
comprising:
a) using a method involving no alkali metal intercalation
to provide a supply of nano-scaled graphite platelets or
exfoliated graphite flakes with an average platelet or flake
thickness of no more than 10 nm or, on an average, having no
more than 30 layers per platelet or flake; and
b) intercalating said supply of nano-scaled platelets or
exfoliated flakes to produce intercalated nano platelets or flakes
containing no alkali intercalant and exfoliating said intercalated
nano platelets or flakes at a temperature and a pressure for a
sufficient period of time to produce said ultra-thin nano-scaled
platelets having an average thickness less than 2 nm or
comprising, on an average, no more than 5 layers per platelet.
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Appellants appeal the following rejections1:
1. Claims 1-10, 24, 25, 29, and 38-42 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Viculis (Lisa M. Viculis et al.,
Intercalation and Exfoliation Routes to Graphite Nanoplatelets,
15 J. MATERIALS CHEMISTRY 974 (2005)) in view of Mack (Julia J.
Mack et al., Graphite Nanopatelet Reinforcement of Electrospun
Polyacrylonitrile Nanofibers, 17 ADVANCED MATERIALS 77 (2005))
and Chen (Guohua Chen et al., Preparation and Characterization of
Graphite Nanosheets from Ultrasonic Powdering Technique,
42 CARBON 753 (2004)).
2. Claims 11-18, 23, 26, and 30 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bunnell (US 5,186,919 issued Feb. 16, 1993)
in view of Mack.
3. Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bunnell in view of Mack and Lu (Wei Lu et al.,
Epoxy Resin/Graphite Electrically Conductive Nanosheet
Nanocomposite, 21 MATERIALS & MANUFACTURING PROCESSES 167
(2006)).
4. Claims 31-37 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bunnell.

1 Appellants do not list the provisional obviousness-type double patenting
rejection of claims 11-15 and 17-20 over claims 1-10 of copending
application 11/807,728 as being on appeal though the Examiner maintains
the rejection (App. Br. 9, 17-18; Ans. 14-15). Application 11/807,728
issued as U.S. Patent 7,497,205. We summarily affirm this rejection of the
Examiner, as it has not been contested by Appellants.
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5. Claims 1, 2, 8, 24, and 25 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable
over claims 1, 2, 4, 10, and 12 of application 11/881,389.
6. Claims 1, 2 and 8 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting over claims 1, 3, 5, 8,
14, and 15 of copending application 11/787,442.

REJECTION (1)
Appellants’ arguments focus on claims 1 and 29 (App. Br. 10-15).
We note that Appellants’ arguments regarding claims 11, 30, 31, and 37 are
not germane to any of the rejections as these claims have not be included in
rejection (1) and Viculis has not been included in any other rejection where
claims 11, 30, 31, and 37 were rejected (App. Br. 12-13, 14; Ans. 4-8).

ISSUE
Did the Examiner reversibly err in determining that the combined
teachings of Viculis, Mack and Chen would have suggested the subject
matter of claims 1 and 29? We decide this issue in the negative.

FINDINGS OF FACT AND ANALYSES
The Examiner finds that Viculis teaches the subject matter of claim 1,
except for the supply of nano-scaled platelets or exfoliated flakes have an
average platelet or flake thickness of no more than 10 nm or, on average,
having no more than 30 layers per platelet or flake and no use of alkali metal
intercalants (Ans. 4-5). The Examiner finds that Mack teaches exfoliated
nanoplatelets having a thickness of 40 ± 15 layers, which would include
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platelets with a thickness of 25 layers (id. at 5). The Examiner finds that
Chen teaches acid used as an intercalant to produce nanoscaled graphite
platelets (id.). The Examiner concludes that it would have been obvious to
use Mack’s exfoliated platelets as the starting material in order to provide a
starting material required by Viculis’ process (id.). The Examiner further
concludes that using Chen’s acid as an intercalant in lieu of Viculis’ alkali
metal intercalant would have been obvious because the applied prior art
teaches the acid or alkali metal intercalant are functional equivalents (id.).
Appellants argue that Viculis does not teach or suggest the
reintercalation of the exfoliated particles to achieve exfoliated nano-scaled
platelets having an average thickness of less than 2 nm (App. Br. 10-11).
Appellants contend that the argued documentary evidence on pages 11-12 of
the Brief establishes that the skilled artisans did not appreciate Appellants’
claimed reintercalation-reexfoliation process until two years after
Appellants’ filing date which emphasizes the novelty and non-obviousness
of the claimed method. Id. at 12.
Appellants’ argument is contradicted by the Viculis reference that
teaches the reintercalation of exfoliated graphite:
Here we describe how graphite that has already been
intercalated with oxidizing acids and exfoliated by rapid heating
can be improved. The exfoliated graphite is reintercalated with
alkali metals and exfoliated with aqueous solvents to produce
even thinner platelets than previously reported, on the order of
2-150 nm in thickness.
Viculis 974. Thus, Viculis teaches reintercalation of exfoliated graphite.
Though Appellants contend that Viculis does not teach achieving a
graphite sheet having a thickness of less than 2 nm (App. Br. 11, 13-14),
Appellants do not specifically respond to the Examiner’s finding that
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Viculis’ teaching of forming a graphite sheet with a thickness in the range of
2-150 nm is close enough to Appellants’ claimed 2 nm or less range to
expect Viculis’ graphite sheet to have the same property (Ans. 42). While
Appellants contend that thinner nano-graphene platelets (NGP) have
fundamentally different properties than thicker NGP (App. Br. 15),
Appellants do not refer us to any objective evidence that shows that Viculis’
teaching of a 2 nm thick graphite sheet would not be reasonably expected to
have the same properties as a slightly less than 2 nm thick graphite sheet as
found by the Examiner. The evidence contained in the Evidence Appendix
of the Brief merely shows the thickness of the graphite sheets achieved with
different intercalants; it does not establish any difference in property as
argued.
Appellants further argue that Chen’s teaching to use acid as an
intercalant does not add support to the combination of Viculis and Mack
because Viculis teaches using acid as the intercalant for the initial
intercalation and exfoliation step (App. Br. 13). Appellants contend that
Viculis reintercalates with alkali metal, which as shown by the evidence
reproduced from the August 11, 2009 response presented in the Evidence
Appendix, produces thicker graphite sheets (id. at 13-14).
These arguments are unpersuasive because they fail to address the
Examiner’s finding that Chen, Viculis and Mack teach that acid and alkali
metal are functionally equivalent intercalants (Ans. 5). Based on this
functional equivalency of the intercalants, the Examiner concludes that it
would have been obvious to substitute an acid for Viculis’ alkali metal

2 The Examiner refers to the Manual of Patent Examining Procedure
(MPEP) § 2144.05(I), which relies on Titanium Metals Corp. of Am. v.
Banner, 778 F.2d 775 (Fed. Cir. 1985) to support the Examiner’s position.
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intercalant with expected success. Id. See In re Fout, 675 F.2d 297, 301
(CCPA 1982) (“Express suggestion to substitute one equivalent for another
need not be present to render such substitution obvious.”).
Moreover, Appellants’ argument that the proffered evidence shows
that alkali metal intercalants always produce thicker graphite sheets is
undermined by Viculis’ teaching that the resulting thickness of the graphite
sheets may be 2 nm as the lower end of the range. As noted above, the
Examiner finds and Appellants do not dispute that this Viculis graphite sheet
thickness disclosure is close enough to the claimed graphite sheet thickness
range (i.e., 2 nm or less) that it would have been reasonable to expect that
the graphite sheets have the same property.
Appellants argue that Mack only teaches an average thickness of the
graphite sheet being between 40 ± 15 layers, which is different than
Appellants’ claimed average thickness of no more than 30 layers (App. Br.
14). Appellants contend that most of Mack’s graphite sheets would have a
thickness greater than the claimed thickness. Id.
Contrary to Appellants’ arguments, the fact that Mack’s graphite sheet
thickness range overlaps the claimed graphite sheet thickness range would
have rendered the claimed range prima facie obvious. In re Peterson, 315
F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claim 29, Appellants argue that Mack does not teach the
more narrowly claimed graphite sheet thickness range (i.e., 24 layers or less
per platelet) (App. Br. 14). However, the Examiner finds that Mack’s range
(i.e., 25 to 55 layers) is so close to Appellants’ claim 29 range of graphite
thicknesses, the two materials are reasonably expected to have the same
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property (Ans. 8). Appellants do not respond to or address the Examiner’s
specific findings and treatment of claim 29.
Finally, Appellants argue that there is no reason absent hindsight to
use Mack’s exfoliated graphite as the starting material in Viculis’ process
(App. Br. 14-15). However, the Examiner reasons that one of ordinary skill
in the art would have been motivated to do so to provide a starting material
to Viculis’ process (Ans. 5). In other words, the reason for using Mack’s
exfoliated graphite as the initial exfoliated graphite in Viculis’ process stems
from Viculis’ use of exfoliated graphite as the starting material and the
knowledge of one skilled in the art. We do not find that the Examiner
engaged in impermissible hindsight in reaching this conclusion.
For the above reasons, we affirm the Examiner’s § 103 rejection over
Viculis in view of Mack and Chen.

REJECTIONS (2) to (4)
Appellants’ arguments focus on claim 11 of rejection (2) only (App.
Br. 16). Regarding rejections (3) and (4), Appellants rely on arguments
made regarding claim 11 under rejection (2) (id. at 16-17). Accordingly,
claims 19, 20, and 31-37 will stand or fall with our analysis regarding claim
11 under rejection (2).

ISSUE
Did the Examiner reversibly err in finding that Bunnell teaches the
same ultrasonication step as claimed such that one of ordinary skill in the art
would have expected the ultrasonication step of Bunnell to be able to
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perform the same function (i.e., exfoliation) as claimed? We decide this
issue in the negative.

FINDINGS OF FACT & ANALYSIS
The Examiner finds that Bunnell teaches all the steps recited in claim
11 including the use of ultrasonication to exfoliate nano-graphene platelets
(Ans. 8). The Examiner further finds that Bunnell teaches the same
ultrasonication step as claimed such that one of ordinary skill in the art
would have expected the ultrasonication step of Bunnell to perform the same
function as claimed (id. at 16).
Appellants argue that Bunnell does not teach using ultrasonication to
exfoliate, but rather uses ultrasonication merely to break-up the previously
exfoliated product (App. Br. 16).
Claim 11 requires that the steps of providing a supply of nano-scaled
graphite platelets or exfoliated graphite flakes, dispersing the supply of
nano-scaled platelets or flakes in a liquid medium containing a surfactant to
form a suspension, and exposing the suspension to direct ultrasonication at a
sufficient energy level and time to exfoliate and separate the ultra-thin nano-
scaled platelets into having an average thickness of less than 2 nm or
comprising, on an average, no more than 5 layers per platelet (Claim App’x).
Appellants disclose that the ultrasonication power is usually greater
than 80 Watts, with a preference for higher energy level to exfoliate (Spec.
8:2; 16:11-13). Appellants exemplify ultrasonication at 125 W for 1 hour
(id. at 18, Ex. 2 and 3). Appellants preface the exemplary disclosure by
stating that these disclosures do not limit the scope of the invention (Spec.
17:17-18).
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Bunnell teaches providing exfoliated graphite sheets, adding hexane
and fish oil as a surfactant and then ultrasonicating for five minutes at
345 W (col. 4, Ex. A).
Based on these disclosures, Appellants’ arguments fail to persuade us
of any patentable distinction between Bunnell’s disclosure and Appellants’
claimed invention. Rather, we agree with the Examiner that Bunnell teaches
the same step of ultrasonication of a dispersed, exfoliated graphite material.
Bunnell teaches that the ultrasonication is performed at an energy level (i.e.,
345 W) within Appellants’ disclosed range (i.e., greater than 80 Watts).
Accordingly, though not specifically disclosed by Bunnell, it would have
been reasonably expected that exfoliation would have occurred during
Bunnell’s ultrasonication process.
The Examiner has established a prima facie case of obviousness such
that the burden shifted to Appellants to show nonobviousness. Appellants’
mere argument that Bunnell fails to teach that exfoliation occurs during the
ultrasonication step fails to satisfy their burden. The preponderance of the
evidence favors the Examiner’s obviousness conclusion.
We affirm the Examiner’s rejections (2) to (4).

REJECTIONS (5) AND (6)
We note that application 11/881,389 used in the Examiner’s
provisional obviousness-type double patenting rejection (5) was abandoned
on May 24, 2011. Accordingly, rejection (5) is moot.
Regarding rejection (6), application 11/787,442 issued as US Patent
8,132,746. Appellants argue that the Examiner’s only justification for the
rejection is based upon the application involving processes in which nano-
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graphene platelets are produced by a combination of intercalation and
exfoliation steps without accounting for the specific and distinctly different
steps of the claimed processes (App. Br. 17).
We have reviewed the Examiner’s rejection on page 14 of the Answer
and agree with Appellants that the Examiner has not satisfied the burden of
establishing a prima facie case of unpatentability. The Examiner has not
made specific findings regarding the differences between the claimed
processes and resolved why the differences would have been obvious.
Contrary to the Examiner’s argument that Appellants have not specifically
pointed out the differences between the claimed inventions, it is the
Examiner’s initial burden to point out the differences between the claimed
inventions in making the prima facie case.
For these reasons, we reverse the Examiner’s nonstatutory
obviousness-type double patenting rejection over application 11/787,442,
now US Patent 8,132,746.

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.

ORDER
AFFIRMED

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