Ex Parte Coleman

Patent Trial and Appeal Board

Sep 29, 2017

13384881 (P.T.A.B. Sep. 29, 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.
13/384,881 01/19/2012 Karl Stuart Coleman 920257.00015 1029
26710 7590
QUARLES & BRADY LLP
Attn: IP Docket
411 E. WISCONSIN AVENUE
SUITE 2350
MILWAUKEE, WI 53202-4426
EXAMINER
MCCRACKEN, DANIEL
ART UNIT PAPER NUMBER
1736
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARL STUART COLEMAN
Appeal 2016-008548
Application 13/384,881
Technology Center 1700
Before GEORGE C. BEST, BRIAN D. RANGE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—6, 10—31, 35, 36, and 38-43.3 We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
1 In this decision, we refer to the Specification filed January 19, 2012
(“Spec.”), the Final Office Action mailed July 8, 2015 (“Final Act.”), the
Appeal Brief filed December 7, 2015 (“Appeal Br.”), the Examiner’s
Answer mailed July 21, 2016 (“Ans.”), and the Reply Brief filed
September 14, 2016 (“Reply Br.”).
2 Appellant identifies the real party in interest as Applied Graphene
Materials UK Limited. Appeal Br. 1.
3 Claim 37 is pending and objected to as being dependent upon a rejected
base claim. Thus, claim 37 is not before us in this appeal. Final Act. 16.
Appeal 2016-008548
Application 13/384,881
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief, is illustrative of the claims on appeal.
1. A process for producing graphene, comprising the step of:
introducing a solution of a metal alkoxide in a solvent into
a decomposition apparatus, wherein the step of introducing the
solution includes creating droplets comprising a spray or mist or
aerosol of the metal alkoxide solution, the decomposition
apparatus includes a first region having a sufficiently high
temperature to cause thermal decomposition of the metal
alkoxide, to produce graphene, and wherein the droplets are
created in, or introduced to, a flow of gas.
Appeal Br. A-l (Appendix A).
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1: Claims 1—6, 10-14, 18—31, 35, 36, and 38-43 under pre-
AIA 35 U.S.C. § 103(a) as unpatentable over Stride et al. (WO 2009/029984
Al, published March 12, 2009) (“Stride”) in view of Maruyama et al.
(US 2006/0073275 Al, published April 6, 2006) (“Maruyama”) (Final Act.
10-15);
Rejection 2: Claims 14 and 15 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Stride in view of Maruyama, and further in view of
Vivekchand et al., Carbon nanotubes by nebulized spray pyrolysis, 386
Chem. Phys. Lett. 313—318 (2004) (“Vivekchand”) (Final Act. 15); and
Rejection 3: Claims 16 and 17 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Stride, Maruyama, Vivekchand, and further in view of
Huang, et al., Patterned Growth and Contact Transfer of Well-Aligned
Carbon Nanotube Films, 103 J. Phys. Chem. B 4223^4227 (1999)
(“Huang”) (Final Act. 15—16).
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Application 13/384,881
DISCUSSION
Rejection 1
Stride teaches a process for producing graphene that includes (i)
reacting a metal with an alcohol to produce a solvothermal product
comprising a metal alkoxide (“a solvothermal process”); and (ii) pyrolysing
the solvothermal product to produce graphene. Stride 5,11. 3—8. Stride
teaches that the solvothermal process may be conducted in a sealed vessel.
Id. at 12,11. 1—5. According to the Examiner, this is a “batch process.”
Final Act. 11. However, the Examiner finds that Stride teaches that the
pyrolysis or heating can be conducted in any different vessel, including
those open to the atmosphere. Final Act. 12; Stride 17,11. 4—8. The
Examiner thus finds that Stride at least suggests a continuous process, or at
least not foreclose the possibility of using such a process. Final Act. 12. For
purposes of the rejection, the Examiner treats the method disclosed in Stride
is a “base” method. Id.
The Examiner finds that Maruyama teaches a comparable method
and/or a method that is applicable to the base method of Stride. Final
Act. 11. Maruyama teaches a process for producing a single-walled carbon
nanotube by a vapor deposition technique that includes: (1) spraying a
solution prepared by dissolving an organic metal compound in an organic
solvent into a furnace of a rare gas atmosphere, (2) vaporizing the organic
metal compound and the organic solvent by heating the sprayed solution,
(3) heating and decomposing the vaporized organic metal compound to
obtain metal, and heating and decomposing the vaporized organic solvent
with the metal to obtain carbon atoms, and (4) growing a graphene sheet
using the carbon atoms. Maruyama 1 52.
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Application 13/384,881
Based on these teachings, the Examiner finds that one of ordinary skill
in the art could have or would have applied Maruyama’s continuous process,
which includes a nozzle for spraying a solution comprising a metal
compound into a furnace, to Stride’s pyrolysis step, which can be conducted
using a furnace, to achieve the predictable result of producing graphene.
Final Act. 12.
Appellant argues that Stride’s batch process for making graphene is
not similar to Maruyama’s continuous process for producing carbon
nanotubes, and thus, one of ordinary skill in the art would not have been led
to use Maruyama’s spray nozzle in Stride’s process to spray the
solvothermal product into a furnace before pyrolysis treatment, absent
hindsight reasoning. See Appeal Br. 15; see also a Declaration under
37 C.F.R. § 1.132 executed by Karl Stuart Coleman on March 3, 2015 (“the
Coleman Declaration”) || 13—18 (stating that the reaction mechanisms and
processes for the synthesis of graphene, for example as disclosed in Stride,
and a process for the synthesis of carbon nanotubes, for example as
disclosed in Maruyama are “fundamentally different.”). In particular,
Appellant argues that one of ordinary skill in the art would not have been led
to use the clathrate-like structure of Stride’s metal oxide solvothermal
product as a spray, mist, or aerosol, as in Maruyama’s process, because
doing so would have destroyed the clathrated structure which is required to
produce graphene. Appeal Br. 10, 11. To support this argument, Appellant
submitted the Coleman Declaration along with an article, Mohammad
Choucair et al., Gram-scale production of graphene based on solvothermal
synthesis and sonication, 4 Nature Nanotech. 30-33 (2009 Macmillan
Publishers Fimited) (“Choucair”). See Choucair 32 (teaching that the
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Application 13/384,881
clathrated crystalline structure of the solvothermal metal alkoxide product is
“essential” to produce the metastable ethanol-rich graphene precursor); see
also Coleman Decl. 110 (stating that modifying Stride process by forming a
spray, mist, or aerosol from the solvothermal product would destroy the
clathrated structure of the solvothermal product, and thus would not produce
graphene).
Appellant’s arguments are persuasive. Contrary to the Examiner’s
contention (see Final Act. 12), Stride’s batch process for making graphene
does not appear to be “comparable” to Maruyama’s continuous process for
preparing carbon nanotubes. Stride’s batch process employs a solvothermal
product comprising a metal alkoxide that is commonly a solid, for example a
powdery or granular solid whereas Maruyama’s continuous process employs
a solution prepared by dissolving an organic metal compound, such as
metallocenes, in an organic solvent. Stride 10,11. 3—7; Maruyama 128.
Although, as the Examiner points out (Final Act. 12), Stride teaches that its
pyrolysis step may be conducted “open to the atmosphere” (Stride 17,11. 4—
8), on this record, the Examiner has not pointed to sufficient factual
evidence in Stride that its solvothermal process can be conducted in anything
other than a closed vessel, for example, a sealed vessel. Stride 12,11. 1—5.
The processes of Stride and Maruyama have notable differences, and on this
record, the Examiner has not adequately explained why one of ordinary skill
in the art would have been led to modify Stride’s process by spraying the
solvothermal product into a furnace for pyrolysing the solvothermal product
to produce graphene or why successful combination of these techniques
would predictably lead to a successful outcome. Thus, on this record, we
agree with Appellant that a preponderance of the evidence does not support
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Application 13/384,881
the Examiner’s conclusion that claims 1—6, 10-14, 18—31, 35, 36, and 38-43
would have been obvious over Stride in view of Maruyama.
Even if the Examiner established a prima facie case of obviousness
under § 103, when an applicant comes forward with rebuttal evidence, the
Examiner must consider such evidence before making a conclusion of
obviousness. In re Sullivan, 498 F.3d 1345, 1352 (Fed. Cir. 2007)
(“Whether the composition would have been obvious cannot be determined
without considering evidence attempting to rebut the prima facie case.”).
Indeed, “[ajfter a prima facie case of obviousness has been made and
rebuttal evidence submitted, all the evidence must be considered anew.” In
re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 1990) (citing In re Piasecki,
745 F.2d 1468, 1472 (Fed. Cir. 1984)). On this record, the Examiner’s
consideration and treatment of Appellant’s rebuttal evidence is improper
because there is no indication that the Examiner has considered the Coleman
Declaration in a meaningful way and reweighed the entire merits before
reaching a conclusion of obviousness. Rather, the Examiner essentially
dismisses the statements in the Coleman Declaration as “conclusory
statements] of a party with financial interest in the outcome of this appeal,”
and unsupported by factual evidence. Ans. 14. The interest of an expert in
the outcome of the appeal is one of many factors the Examiner must
consider in assessing the probative value of declaration evidence. Manual of
Patent Examining Procedure (MPEP) § 716.01(c). However, the evidence
should not be disregarded for that reason alone. In re McKenna, 203 F.2d
111, 720 (CCPA 1953). Moreover, although factual evidence is preferable
to opinion testimony, such testimony is entitled to consideration and some
weight as long as the opinion is not on the ultimate legal conclusion at issue.
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Application 13/384,881
In re Altenpohl, 500 F.2d 1151, 1158 (CCPA 1974). On the record before
us, the Examiner has not adequately addressed Mr. Coleman’s statement,
which is factually supported by Choucair, that producing a spray, mist or
aerosol using a solvothermal product would not work because it would
destroy the solvothermal product’s clathrated structure that is “essential” for
producing graphene in Stride’s process. Compare Coleman Deck 110 and
Reply Br. 4—5 with Final Act. 4—5 and Ans. 13—14. Moreover, the Examiner
admits that “if true,” the statement at 110 of the Coleman Declaration
“might be relevant [to] withdrawing the rejection.” Ans. 14. The Coleman
Declaration attests that “[a]ll statements made ... are true to the best of my
personal knowledge, and all statements made on information and belief are
believed to be true.” Coleman Decl. 5. The Examiner, however, has not
provided a sufficient reason to question the truthfulness of the statements in
the Coleman Declaration other than that they were made by the inventor of
the present application.
Accordingly, on this record, we determine that a preponderance of the
evidence weighs in favor of Appellant’s position. Thus, we cannot sustain
claims 1—6, 10-14, 18—31, 35, 36, and 38-43.
Rejections 2 and 3
As with Rejection 1, Rejections 2 and 3 are premised on the same
erroneous factual findings regarding Stride and Maruyama. In addition, as
with Rejection 1, the Examiner fails to properly consider and evaluate the
rebuttal evidence in the Coleman Declaration before making a conclusion of
obviousness. Thus, we also cannot sustain Rejections 2 and 3.
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DECISION
For the above reasons, the Examiner’s rejections of claims 1—6, 10—
31, 35, 36, and 38—43 are reversed.
REVERSED
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