DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election of Group I in the reply filed on 4/28/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 9-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/28/2026.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Marinero et al. US Pub. No. 2012/0261640 A1 in view of Park Dong-Wook et al.: “bottom-gate coplanar graphene transistors with enhanced graphene adhesion on atomic layer deposition Al2O3” from IDS.
Re claim 1. Marinero et al. disclose a graphene substrate comprising: a graphene layer 102 (e.g., fig. 1) structure directly on a metal oxide layer 108 (e.g., fig. 1), said metal oxide layer 108 directly on a support layer 112 (e.g., fig. 1); wherein the metal oxide layer 108 has a thickness (e.g., fig. 1) and is selected from the group consisting of Al.sub.2O.sub.3, HfO.sub.2, MgO, MgAl.sub.2O.sub.4, Ta.sub.2O.sub.5, Y.sub.2O.sub.3, ZrO.sub.2 and YSZ (e.g., fig. 1 and paragraph 24); and wherein the support layer 112 is BN, AlN, GaN, SiC, diamond, or a combination thereof (e.g., fig. 1 and paragraph 25), see figs. 1-6 and pages 1-4 for more details.
Re claim 3. The graphene substrate according to claim 1, wherein the support layer 112 (e.g., an upper portion of 112, fig. 1) is provided on a wafer (e.g., a lower portion of 112, fig. 1).
Re claim 4. The graphene substrate according to claim 1, wherein the graphene layer structure is a graphene monolayer (e.g., paragraph 19).
Re claim 8. An electrical device (e.g., see abstract) comprising the graphene substrate according to claim 1.
Marinero et al. disclosed above; however, Marinero does not explicitly show the metal oxide layer having a thickness of less than 5 nm.
Park et al. teaches a similar device, which comprises a graphene layer structure (e.g., fig. 1a/b) directly on a metal oxide layer (e.g., fig. 1a/b), said metal oxide layer directly on a support layer (e.g., fig. 1a/b); wherein the metal oxide layer has a thickness of about 5 nm (e.g., page 102106-3, second paragraph) and is selected from the group consisting of Al.sub.2O.sub.3, HfO.sub.2, MgO, MgAl.sub.2O.sub.4, Ta.sub.2O.sub.5, Y.sub.2O.sub.3, ZrO.sub.2 and YSZ (e.g., fig. 1a/b), see pages 102106-1 to 102106-5 for more details.
Although the exact recitation “less than 5 nm” of the instant claim is not explicitly stated by Park et al. in the related text, it appears that the instant claim range is within the scope of the cited prior art. Therefore, the instant claim appears to be Prima Facie obvious over Park et al
Furthermore, the thickness range of claims 1, 5-7 are considered to involve routine optimization while has been held to be within the level of ordinary skill in the art. As noted in In re Aller, the selection of reaction parameters such as thickness, temperature and concentration etc. would have been obvious:
“Normally, it is to be expected that a change in temperature, or in concentration, or in both, would be an unpatentable modification. Under some circumstances, however, changes such as these may impart patentability to a process if the particular ranges claimed produce a new and unexpected result which is different in kind and not merely degree from the results of the prior art...such ranges are termed Acritical ranges and the applicant has the burden of proving such criticality.... More particularly, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”
In re Aller 105 USPQ233, 255 (CCPA 1955). See also In re Waite 77 USPQ 586 (CCPA 1948); In re Scherl 70 USPQ 204 (CCPA 1946); In re Irmscher 66 USPQ 314 (CCPA 1945); In re Norman 66 USPQ 308 (CCPA 1945); In re Swenson 56 USPQ 372 (CCPA 1942); In re Sola 25 USPQ 433 (CCPA 1935); In re Dreyfus 24 USPQ 52 (CCPA 1934).
Therefore, one of ordinary skill in the requisite art before the invention was made would have used thickness ranges as taught by Park et al. or any thickness range suitable to the device of Marinero et al. in order to optimize the performance of the device.
Further in this regard, the specification contains no disclosure of either the critical nature of the claimed arrangement (i.e. - less than 5 nm) or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen limitations or upon another variable recited in a claim, the Applicant must show that the chosen limitations are critical. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Re claim 2, using the BN, AlN or GaN for the support layer has been well-known in the semiconductor art. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co., Inc. v. Interchemical Corp. , 325 U.S. 327, 65 USPQ 297 (1945). "Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig - saw puzzle." 65 USPQ at 301.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACK CHEN whose telephone number is (571)272-1689. The examiner can normally be reached Monday to Friday, 8am to 4pm.
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/JACK S CHEN/Primary Examiner, Art Unit 2893
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