Ex Parte Kian et al

Patent Trial and Appeal Board

Oct 30, 2017

13263738 (P.T.A.B. Oct. 30, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/263,738 10/08/2011 Loh Ping Kian 218005-0086 6644
24267 7590 11/01/2017
CESARI AND MCKENNA, LLP
88 BLACK FALCON AVENUE
BOSTON, MA 02210
EXAMINER
GOLUB-MILLER, MARCIA A
ART UNIT PAPER NUMBER
2828
NOTIFICATION DATE DELIVERY MODE
11/01/2017 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 LOH PING KIAN, OIAOLIANG BAO, DING YUAN TANG, and
HAN ZHANG
Appeal 2016-008036
Application 13/263,7381
Technology Center 2800
Before CATHERINE Q. TIMM, MICHAEL P. COLAIANNI, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
rejection under 35 U.S.C. § 102(b) of claims 1, 6—9, 21, and 22.
We have jurisdiction under 35 U.S.C. § 6.
We reverse.
1 Appellants identify the real party in interest as The National University of
Singapore. App. Br. 2.
Appeal 2016-008036
Application 13/263,738
BACKGROUND
The subject matter on appeal is directed to graphene-based saturable
absorbers for use in fiber lasers. Spec. 12.
Sole independent claim 1 is illustrative and appears below, with the
key limitation italicized.
1. A saturable absorber device for use in a laser cavity,
comprising:
an optical element; and
a saturable absorber material operably supported by the optical
element and comprising a multilayer graphene film.
OPINION
All claims are rejected under 35 U.S.C. § 102(b) as being anticipated
by Jablonski.2 Final Act. 2—3. We need only address claim 1.
The Examiner finds that Jablonski discloses the saturable absorber
device recited in claim 1, and relies on Jablonski’s disclosure of multi-
walled carbon nanotubes to satisfy the limitation requiring a “multilayer
graphene film.” Final Act. 2, citing Jablonski || 77, 88, and 91.
The Examiner finds that carbon nanotubes are cylindrically shaped
sheets of graphene (Ans. 3). Appellants argue that Jablonski’s multi-walled
carbon nanotubes are distinguishable from multilayer graphene. App. Br. 9—
13; Reply Br. 4—6. Specifically, Appellants urge that “once a sheet of
graphene is rolled up into a [carbon nanotube], its edges become atomically
bonded and it no longer has the properties of a layer or sheet of graphene.”
2 Mark K. Jablonski et al., US 2006/0198399 Al, published September 7,
2006 (hereinafter, “Jablonski”).
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Appeal 2016-008036
Application 13/263,738
Reply Br. 4. Appellants also present an Affidavit under 37 C.F.R. § 1.132
which outlines differences between graphene and carbon nanotubes.3
Thus, the dispositive issue before us is whether Appellants have
identified reversible error in the Examiner’s finding that the recited
multilayer graphene film, under the broadest reasonable interpretation,
includes multi-walled carbon nanotubes as disclosed by Jablonski.
We answer this question in the affirmative for essentially the reasons
expressed by Appellants (App. Br. 9—13; Reply Br. 4—6) and below.
It is well-established that “during examination proceedings, claims are
given their broadest reasonable interpretation consistent with the
specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). See also
In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Here, Appellants’ Specification distinguishes saturable absorber
materials comprising graphene from absorber materials which contain
carbon nanotubes. Spec. 7—12. Specifically, single-wall carbon nanotubes
(i.e., SWCNTs) are disclosed as having “non-uniform chiral properties” that
“present inherent problems for precise control” of saturable absorber
properties such as resonance issues at certain wavelengths, “poor wideband
durability,” and formation of bubbles due to nanotube entanglement.
Spec. 8. In contrast, according to the Specification, saturable absorbers
3 Affidavit of Dr. Manish Chhowalla, executed January 2, 2015 (“Aff.”).
Appellants submitted this Affidavit pursuant to Rule 1.116(e) on the same
date the Appeal Brief was filed (i.e., January 2, 2015). App. Br. 17.
Appellants submitted a Petition “for acceptance and entry of the Affidavit”
with their Reply Brief dated June 2, 2016. Following a Remand of this
Appeal to the Examiner on July 8, 2016 to decide the Petition, the Petition
was granted in a Decision on Petition dated August 8, 2016.
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Appeal 2016-008036
Application 13/263,738
containing graphene overcome such problems and allow for “better
performance, cheaper fabrication and easier integration with the fabrication
process compared to conventional methods involving [] SWCNTs.” Id. at
10 (emphasis added). In view of such improvements, absorber materials
containing graphene are meant to replace absorber materials containing
carbon nanotubes. Id. at 9 (emphasis added). The Specification also sets
forth an experiment wherein graphene multilayers are grown in the form of
graphene sheets. Id. at 37—38.
Based on such disclosure, we determine that the Examiner’s claim
construction of the term “graphene” as including carbon nanotubes (i.e.,
cylindrically shaped graphene) is unreasonably broad. That is, “graphene,”
as properly construed in light of the Specification, includes sheets of
graphene but does not encompass graphene in a tubular shape such as a
nanotube.
We observe that Appellants’ arguments (App. Br. 9—12) and evidence
(Aff. 6—17) make clear that sheets of graphene and carbon nanotubes possess
different properties. Such arguments and evidence are consistent with the
disclosure contained in the Specification outlining the divergent properties
of graphene and carbon nanotubes. Spec. 7—12.
It follows, then, that the recited “multilayer graphene film” does not
encompass Jablonski’s multi-walled carbon nanotubes as found by the
Examiner. Thus, we reverse the rejection based on this erroneous finding.
SUMMARY
The rejection of claims 1, 6—9, 21, and 22 is reversed.
REVERSED
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