THE BOEING COMPANY

Patent Trials and Appeals Board

Sep 14, 2020

2019006569 (P.T.A.B. Sep. 14, 2020)

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.
15/014,096 02/03/2016 Minas H. Tanielian 15-2227-US-NP (800-129) 7739
107112 7590 09/14/2020
The Small Patent Law Group LLC
225 S. Meramec, Suite 725
St. Louis, MO 63105
EXAMINER
TSO, STANLEY
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
09/14/2020 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):
docket@splglaw.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MINAS H. TANIELIAN

Appeal 2019-006569
Application 15/014,096
Technology Center 2800
____________

Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1–20.2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42—i.e., “The Boeing Company” (Application Data Sheet
filed February 3, 2016 at 5), which is also identified as the real party in
interest (Appeal Brief filed June 17, 2019 (“Appeal Br.”) at 4).
2 See Appeal Br. 9–19; Reply Brief filed August 30, 2019 (“Reply Br.”) at
3–7; Final Office Action entered March 18, 2019 (“Final Act.”) at 3–15;
Examiner’s Answer entered July 12, 2019 (“Ans.”) at 3–10.
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I. BACKGROUND
As a preliminary matter, we observe that the Reply Brief includes
matters relating to the substance of an Examiner-initiated interview held on
June 27, 2019 (Reply Br. 2–3; Examiner-Initiated Interview Summary
entered July 12, 2019). Under 35 U.S.C. § 134(a), our review is limited to a
primary examiner’s decision to reject claim(s). Therefore, we do not address
these matters.
The subject matter on appeal relates to an electrical connect with high
conductivity (i.e., reduced resistance) and to a method for its formation
(Specification filed February 3, 2016 (“Spec.”) ¶¶ 1, 26). Representative
claim 1 is reproduced from the Claims Appendix to the Appeal Brief, as
follows:
1. An electrical interconnect configured to electrically
interconnect electrical components, the electrical interconnect
comprising:
a plurality of graphene members; and
a metallic overlay connecting the plurality of graphene
members together.
(Appeal Br. 20).
II. REJECTIONS ON APPEAL
The claims on appeal stand rejected as follows:
A. Claims 1, 2, 4, 7–10, 12, 13, and 16 under AIA 35 U.S.C.
§ 102(a)(1) as anticipated by Su et al.3 (“Su”);
B. Claims 3 and 14 under AIA 35 U.S.C. § 103 as unpatentable

3 Ya-Wen Su et al., Hybrid Stacking Structure of Electroplated Copper onto
Graphene for Future Interconnect Applications, 107 APPL. PHYS. LETT.
093105-1–093105–4 (2015). We attach a clearer copy of this document to
this Decision.
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over Su in view of Shih et al.4 (“Shih”);
C. Claims 5, 6, and 15 under 35 U.S.C. § 103 as unpatentable over
Su in view of Mansour et al.5 (“Mansour”);
D. Claim 11 under 35 U.S.C. § 103 as unpatentable over Su in
view of Kivioja et al.6 (“Kivioja”);
E. Claim 17 under 35 U.S.C. § 103 as unpatentable over Su in
view of Zaretski et al.7 (“Zaretski”);
F. Claim 18 under 35 U.S.C. § 103 as unpatentable over Su in
view of Zaretski and further in view of Kivioja; and
G. Claims 19 and 20 under 35 U.S.C. § 103 as unpatentable over
Su in view of Mansour and Shih.
(Ans. 3–10; Final Act. 3–15).
III. DISCUSSION
REJECTION A
The Appellant provides arguments under separate sub-headings for
various claims (Appeal Br. 9–15). To the extent that these claims have been
argued separately within the meaning of 37 C.F.R. § 41.37(c)(1)(iv), we
address them individually. Otherwise, the claims stand or fall with claim 1,
which we select as representative pursuant to the rule.

4 US 2015/0062452 A1, published March 5, 2015.
5 Ahmed E. Mansour et al., Bromination of Graphene: A New Route to
Making High Performance Transparent Conducting Electrodes with Low
Optical Losses, 7 ACS APPL. MATER. INTERFACES 17692–99 (2015).
6 US 2013/0037780 A1, published February 14, 2013.
7 US 2015/0371848 A1, published December 24, 2015.
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The Examiner finds that Su describes an electrical interconnect
comprising a plurality of graphene members and a metallic overlay that
connects the plurality of graphene members together, as recited in claim 1
(Final Act. 3). Regarding the term “overlay” in claim 1, the Examiner finds
that the Specification does not contain a definition for the term but that the
dictionary definition of the term indicates that it is “anything laid over
another thing; covering” (Ans. 4; see also Final Act. 13). Based on this
interpretation, the Examiner finds that Su’s copper layer, a portion of which
is intermixed with the graphene members, is a “metallic overlay” as
specified in claim 1 (Ans. 5; Final Act. 13–14). Furthermore, the Examiner
finds that Su’s portion of the copper layer that is not intermixed with the
graphene members after annealing also meets claim 1’s “metallic overlay”
limitation (Final Act. 14). Regarding the limitation in claim 1 that the
“metallic overlay connect[s] the plurality of graphene members together,”
the Examiner finds that Su teaches forming a mixture of the copper layer and
the graphene members by heating and annealing the copper and, therefore,
“[t]he mixture of the copper layer and the graphene members is construed as
the copper layer (i.e., metallic overlay) connect[ing] the graphene members
together” (Ans. 5; see also Final Act. 13–14).
The Appellant contends that Su does not anticipate because it does not
describe “a metallic overlay connecting the plurality of graphene members
together,” as recited in claim 1 (Appeal Br. 10). Specifically, the Appellant
argues that, as shown in Su’s Figure 2(e), the copper is above the graphene
and not around any portion of the graphene (id. at 11). The Appellant argues
that, instead, the copper permeates and intermixes with the graphene, as
shown in Su’s Figure 2(f) (id.). In the Appellant’s view, that intermixed
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material of the copper and the graphene is not a metallic overlay that
connects portions of the graphene together, as required by claim 1 (id.).
The Appellant’s arguments fail to identify reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Because we discern no reversible error in the Examiner’s findings and
analysis in support of the anticipation rejection, we adopt them as our own
and add the following primarily for emphasis. In re Cree, Inc., 818 F.3d
694, 698 n.2 (Fed. Cir. 2016); In re Brana, 51 F.3d 1560, 1564 n.13 (Fed.
Cir. 1995).
“During . . . original examination, the PTO must give claims their
broadest reasonable construction consistent with the specification.” In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Thus,
“we look to the specification to see if it provides a definition for claim terms,
but otherwise apply a broad interpretation.” Id. “As [our reviewing] court
has discussed, this methodology produces claims with only justifiable
breadth.” Id.; see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
2143, 2144–45 (2016) (the broadest reasonable interpretation standard
“helps ensure precision while avoiding overly broad claims, and . . . help[s]
members of the public draw useful information from the disclosed invention
and better understand the lawful limits of the claim”).
Applying this mode of claim interpretation, we agree with the
Examiner’s position (Ans. 5; Final Act. 13–14) that Su’s copper layer, a
portion of which is intermixed with the graphene members, is a “metallic
overlay,” as specified in claim 1, because: (i) an “overlay” is “anything laid
over another thing; covering” according to the common dictionary
definition, as shown in Su’s Figures 1(a), 1(c), 2(a), 2(b), 2(e), and 2(f); and
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(ii) nothing in the Specification precludes the “metallic overlay” from
containing intermixed graphene in addition to copper metal. Moreover,
consistent with the Examiner’s findings (Ans. 5; Final Act. 14), Su’s Figures
2(e) and 2(f) merely depict schematic representations whereas Su’s
micrographs show that, at an annealing temperature of 400°C, a copper layer
is disposed over (i.e., electroplated as an overlay over and around) the
intermixing layer IL, the graphene nanoribbons, and the SiO2 substrate (Su
093105-1–093105-2; Figs. 1(a), 1(c), 2(a), 2(b)).
Although the Appellant argues that “[t]he copper is not around any
portion of the graphene” (Appeal Br. 11 (emphasis omitted)), claim 1 does
not recite such a requirement. Claim 1 merely requires “a metallic overlay
[that] connect[s] the plurality of graphene members together” (Appeal Br.
20). Even considering only Su’s schematic representation of the
copper/graphene hybrid structure as shown in Figure 2(f), the copper appears
to be uniformly mixed and reacted with the graphene materials (“members”
as recited in claim 1), including at the edges of the structure, as shown in
Figure 2(e), resulting in the graphene materials (“members”) being bound—
i.e., connected—to the copper.
Accordingly, we sustain the rejection as maintained against claim 1.
With respect to claim 2, which depends from claim 1 and recites
“wherein the metallic overlay connects peripheral edges of the plurality of
graphene members together” (Appeal Br. 20), the Appellant argues that the
“copper is plated only atop the graphene sheet” and that “[t]he plating atop
the graphene sheet does not connect graphene members together” (id. at 12
(emphasis omitted)). We disagree for the reasons already discussed above in
connection with claim 1. Moreover, the micrographs shown in Su’s Figures
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1(a) and 1(c) appear to show that the copper is electroplated over and around
the graphene nanoribbons (Su 1093105-2). Although Su mentions that a
phenomenon known as a “‘terminal effect’ results in the thickness of copper
at the edge being 50% thicker than that at the center” and that, therefore,
“copper is plated only atop the graphene sheet” to define copper patterns
using the underlying graphene layer, a reasonable inference may be drawn
from these disclosures that Su’s method resulted in at least some copper
being electroplated over the peripheral edges of the graphene material—
albeit less than at the top of the graphene material (id. at 1093105-1). In re
Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of
a reference, it is proper to take into account not only specific teachings of the
reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.”).
Additionally, because the PTO has no means to obtain and test
products for comparison, the burden of production was on the Appellant to
show that no copper is electroplated at all at the peripheral edges of the
graphene material. In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Accordingly, we also sustain the rejection as maintained against claim
2.
With respect to claims 12 and 13, the Appellant relies on substantially
the same arguments as offered for claims 1 and 2 (Appeal Br. 12–15).
Therefore, we uphold the rejections as maintained against these claims for
the same reasons discussed above in connection with claims 1 and 2.
REJECTION B
With respect to claims 3 and 14, the Appellant argues that the
Examiner’s combination of Su and Shih is based on conclusory statements
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(id. at 15–16). As the Examiner points out (Ans. 8), the rejection includes
an articulated reason for combining Su and Shih based on sufficient factual
underpinnings, and the Appellant’s skeletal argument to the contrary fails to
address that reasoning. Therefore, we sustain the rejection as maintained
against these claims.
REJECTIONS C–G
As for the remaining claims, the Appellant relies on the same
arguments offered in connection with the claims discussed above.
Therefore, these remaining claims fall for the same reasons discussed above.

IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 7–10,
12, 13, 16
102(a)(1) Su 1, 2, 4, 7–
10, 12, 13,
16

3, 14 103 Su, Shih 3, 14
5, 6, 15 103 Su, Mansour 5, 6, 15
11 103 Su, Kivioja 11
17 103 Su, Zaretski 17
18 103 Su, Zaretski,
Kivioja
18
19, 20 103 Su, Mansour, Shih 19, 20
Overall
Outcome
1–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED