Gerardine G. Botte

Patent Trials and Appeals Board

Aug 23, 2019

14391253 - (D) (P.T.A.B. Aug. 23, 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.
14/391,253 10/08/2014 Gerardine G. Botte OU-12018US 1408
26875 7590 08/23/2019
WOOD, HERRON & EVANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
EXAMINER
MILLER, MICHAEL G
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
08/23/2019 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERARDINE G. BOTTE
Appeal 2018-008616
Application 14/391,253
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
JAMES C. HOUSEL, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Ohio University, appeals
from the Examiner’s decision to reject claims 1–8, 10–14, and 17–21 under

1 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Ohio
University. Appeal Br. 1.
Appeal 2018-008616
Application 14/391,253

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35 U.S.C. § 103(a) as obvious over Dervishi,2 Kawabata,3 and Botte4 and
adding Shah5 to reject claims 15 and 16. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
The claims are directed to a method of forming graphene in the form
of a graphene sheet. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method of forming graphene comprising heating
electrolyzed coal to a temperature effective to form graphite in
the presence of a flowing stream of reductant gas, said
temperature being greater than 400° centigrade and less than
1100° centigrade, wherein the stream of reductant gas deposits
graphene onto a surface forming a graphene sheet.
Appeal Br. 19 (claims appendix).
OPINION
Appellant has identified a reversible error in the Examiner’s finding of
a suggestion within the prior art for using electrolyzed coal and a reductant
gas to form graphene sheets. Appeal Br. 8–18.
Dervishi discloses a method of forming carbon nanotubes (CNTs) and
few-layer graphene sheets by radio-frequency chemical vapor deposition.
Dervishi Abs. At lower temperatures, CNTs are formed, but at 1000°C,

2 Dervishi et al., Versatile Catalytic System for the Large-Scale and
Controlled Synthesis of Single-Wall, Double-Wall, Multi-Wall, and
Graphene Carbon Nanostructures, Chem. Mater. 2009, 21, 5491–5498
(online Oct. 20, 2009).
3 Kawabata, US 2007/0003471 A1, published Jan. 4, 2007.
4 Botte, WO 2010/111129 A1, published Sept. 30, 2010.
5 Shah et al., US 2012/0058352 A1, published Mar. 8, 2012.
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graphene sheets are formed. Id. However, as acknowledged by the
Examiner, Dervishi’s method uses acetylene, not electrolyzed coal as a
carbon source, and does not provide a stream of reductant gas. Dervishi p.
5492 Experimental Results ¶ 2. The Examiner turns to Kawabata and Botte
to support the conclusion of obviousness, but these references fall short of
suggesting the method of the claims.
First, the Examiner finds that “Dervishi is open to assorted
hydrocarbon sources (p 5491, Introduction, first paragraph) and notes that
controlling the hydrocarbon type can influence the growth and morphology
of the nanotubes.” Final 7. However, Dervishi provides no guidance on
selecting hydrocarbon sources. Dervishi merely states that “[s]ynthesis
conditions such as catalyst composition, reaction temperature, hydrocarbon
type, and flow rates of the carrier and hydrocarbon gas have enormous
influences on nanotube growth” and “[t]his method of production is very
versatile and has also been utilized to synthesize graphene in large
quantities.” Dervishi p. 5491 Introduction ¶ 1. This broad brush statement
merely conveys that nanotube growth is sensitive to many process
parameters including the type of hydrocarbon gas used.
Second, neither Kawabata nor Botte suggest heating electrolyzed coal
to form graphite in the presence of a flowing stream of reductant gas and
depositing graphene from the stream of reductant gas onto a surface to form
a graphene sheet. Both Kawabata and Botte are directed to forming carbon
nanotubes, not graphene sheets.
Kawabata teaches growing carbon nanotubes on a substrate by
chemical vapor deposition using a functionalized carbon source compound.
Kawabata ¶ 29. The hydrocarbon sources contemplated for use are
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fullerene, aliphatic hydrocarbons such as methane, acetylene, ethane,
propane and butane, and cyclic hydrocarbons such as benzene. Kawabata
¶ 30. These carbon sources do not suggest the use of coal or electrolyzed
coal as a carbon source.
The Examiner finds that Kawabata “discloses that it is known to use
hydrocarbon sources to grow graphenic carbon nanotubes.” Final 7. To
support this finding, the Examiner cites paragraph 34 of Kawabata, but this
paragraph does not support the finding. Paragraph 34 merely discloses that
the growth mechanism is the same for the functionalized carbon compounds
as it is for ordinary (non-functionalized) carbon compounds. Kawabata
¶ 34. Moreover, Kawabata merely conveys that the growth mechanism is
the same for growing nanotubes. No guidance is provided for growing
graphene sheets.
Botte teaches using electrolyzed coal (char) as a carbon source for
forming nanotubes, not graphene sheet. Botte ¶ 22. According to Botte, the
char particles can be formed into carbon nanotubes using any of the methods
well-known for forming carbon nanotubes such as spray pyrolysis, thermal
chemical vapor deposition, and plasma enhanced chemical vapor deposition.
Botte ¶ 30. Botte then describes a spray pyrolysis method that uses a carrier
gas such as argon or a H2/N2 mixture. Botte ¶ 31. Botte does not disclose
using the radio-frequency method of Dervishi, a process that does not use a
reductant gas.
Although Dervishi teaches a method of forming graphene sheet, the
method is different than that claimed, and the teachings in Kawabata and
Botte, which are directed to forming nanotubes, do not reasonably suggest
using electrolyzed coal in a stream of reductant gas in Dervishi’s method to
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Application 14/391,253

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form graphene sheet. Thus, we determine the evidence fails to support the
Examiner’s conclusion of obviousness. The Examiner’s reliance on Shah to
reject claims 15 and 16 does not cure the deficiencies.
DECISION
The Examiner’s rejection is reversed.
DECISION SUMMARY
Claims
Rejected
Basis  Affirmed Reversed
1–8, 10–14,
17–21
§ 103(a)  1–8, 10–
14, 17-21
15, 16 § 103(a)  15, 16
Outcome 1–8, 10–21

REVERSED