Ex Parte Garg et al

Board of Patent Appeals and Interferences

Feb 16, 2012

11284193 (B.P.A.I. Feb. 16, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/284,193 11/21/2005 Diwakar Garg 06767 USA 6620
23543 7590 02/16/2012
AIR PRODUCTS AND CHEMICALS, INC.
PATENT DEPARTMENT
7201 HAMILTON BOULEVARD
ALLENTOWN, PA 18195-1501
EXAMINER
TUROCY, DAVID P
ART UNIT PAPER NUMBER
1717
MAIL DATE DELIVERY MODE
02/16/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DIWAKAR GARG, PHILIP BRUCE HENDERSON,
DANIEL JOSEPH TEMPEL,
THOMAS N. JACKSON and JIE SUN
____________

Appeal 2010-009037
Application 11/284,193
Technology Center 1700
____________

Before CHARLES F. WARREN, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009037
Application 11/284,193

2
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 3, 6, 9, 10, 12, 13, 15, 16 and 18-33. We have
jurisdiction under 35 U.S.C. § 6.
We REVERSE.
Appellants claim a method for depositing a doped zinc oxide upon a
substrate which includes the step of combining at least one organometallic
zinc compound, at least one diluent, carbon dioxide and least one fluorine or
boron dopant to form a reactive composition wherein the ratio of carbon
dioxide to said at least one organometallic zinc compound is at least about
8.0 and the reactive composition is substantially free of water and oxygen
(claim 1). According to Appellants’ Specification, the claimed combination
of the organometallic zinc compound and CO2 does not prematurely react at
ambient temperatures. Spec. ¶ [0017].
Representative claim 1 reads as follows:
1. A method for depositing a doped zinc oxide upon a
substrate comprising:
combining at least one organometallic zinc compound, at
least one diluent, carbon dioxide and least one fluorine or boron
dopant to form a reactive composition wherein the ratio of
carbon dioxide to said at least one organometallic zinc
compound is at least about 8.0 and the reactive composition is
substantially free of water and oxygen,
introducing the reactive composition into a deposition
chamber, and;
creating a plasma enhanced chemical vapor deposition
environment within the deposition chamber for a time and
under conditions sufficient to deposit doped zinc oxide upon the
substrate wherein the resistivity of the doped zinc oxide is less
Appeal 2010-009037
Application 11/284,193

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than about 0.01 ohm-cm and the transparency in the visible
spectrum is at least about 80%.
Rejection of Claims 1, 3, 9, 10, 12, 13, 15, 16, 18-24 and 26-32
under 35 U.S.C. § 103(a) as being unpatentable over
Fukuda1, Yamada2, Cantwell3, Li4, Vijayakumar5 and Haga6,7

We refer to the Examiner’s Answer for a statement of the Examiner’s
rejection (Ans. 4-9) and add any additional findings of fact appearing below
for emphasis.
It is undisputed that Fukuda fails to deposit a doped zinc oxide layer
over a substrate with the disclosed plasma enhanced chemical deposition
process (PECVD). Ans. 4; App. Br. 12. The Examiner found that Cantwell
teaches, in molecular beam epitaxy (MBE) vapor deposition, that zinc oxide
may be doped using a process gas containing boron or fluoride via an RF
plasma source. The Examiner concludes that it would have been obvious to
one of ordinary skill in the art to have supplied dopant of boron or fluorine
with the reactive composition of Fukuda with a reasonable expectation of
success. Ans. 5-6.

1 JP 2000-303175 published Oct. 31, 2000.
2 US 5,545,443 issued Aug. 13, 1996.
3 US 2003/0146433 A1 issued Aug. 7, 2003.
4 B.S. Li et al., Growth of High Quality ZnO Thin Films at Low Temperature
on Si(100) Substrates by Plasma Enhanced Chemical Vapor Deposition, 20
J. VACUUM SCI. TECH. A 265 (2002).
5 US 4,751,149 issued June 14, 1988.
6 K. Haga et al., ZnO Thin Films Prepared by Remote Plasma-Enhanced
CVD Method, 214 J. CRYSTAL GROWTH 77 (2000).
7 We limit our discussion to Fukuda and Cantwell for this rejection. A
discussion of the Yamada, Li, Vijayakumar and Haga references is
unnecessary for disposition of this rejection.
Appeal 2010-009037
Application 11/284,193

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We agree with Appellants that the Examiner has not provided
adequate reasoning to modify the process of Fukuda in light of the teachings
of Cantwell so as to combine an organometallic zinc compound, CO2 and a
fluorine or boron dopant as required by the subject matter of claim 1. App.
Br. 14; Reply Br. 3. As correctly argued by Appellants, Cantwell uses an
MBE process to deposit a zinc oxide film that does not combine the reactive
components as claimed. Ans. 13; Reply Br. 6. The Examiner has not
adequately explained why one skilled in the art would look to Cantwell’s
MBE process to modify Fukuda’s PECVD process to arrive to the claimed
invention. On the contrary, the Examiner acquiesced to Appellants’
arguments concerning Cantwell’s MBE process, maintains the reasons for
the combination without further clarification. Ans. 18-19.
Under these circumstances, we cannot sustain the Examiner’s
rejection of claims 1, 3, 9, 10, 12, 13, 15, 16, 18-24 and 26-32 under
35 U.S.C. § 103(a) over Fukuda, Yamada, Cantwell, Li, Vijayakumar and
Haga.

Appeal 2010-009037
Application 11/284,193

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Rejection of Claims 1, 3, 9, 10, 12, 13, 15, 16, 18-24 and 26-32
under 35 U.S.C. § 103(a) as being unpatentable over
Fukuda, Yamada, Kondo8, Li, Vijayakumar and Haga9

We again refer to the Examiner’s Answer for a statement of the
Examiner’s rejection (Ans. 10-16) and add any additional findings of fact
appearing below for emphasis.
In this alternative rejection, the Examiner relies on Kondo instead of
Cantwell to establish that a zinc oxide film may be doped with boron and
reaches the same conclusion of obviousness discussed above. Ans. 11.
We also agree with Appellants that the Examiner has not provided an
adequate reasoning to modify the process of Fukuda in light of the teachings
of Kondo so as to combine an organometallic zinc compound, CO2 and a
fluorine or boron dopant as required by the subject matter of claim 1. App.
Br. 31. As correctly argued by Appellants, Kondo uses a PECVD process to
deposit a doped zinc oxide over a substrate that requires using N2O (id. at
30) and does not disclose the use of CO2 or any other oxidant for that
purpose (id. at 31). Consequently, we agree with Appellants that Kondo’s
disclosure is an insufficient guide to one skilled in the art to modify the
process of Fukuda to achieve the subject matter of claim 1. Id.; Reply Br.
21. Under these circumstances, we also cannot sustain the Examiner’s

8 Kazuo Kondo et al., Transparent Conductive ZnO Thin Films Prepared by
Plasma Enhanced CVD – Effect of Boron Dopant, 26 KAGAKU KOGAKU
RONBUNSHU 309 (2000).
9 We limit our discussion to Fukuda and Kondo for this rejection. As in the
prior rejection, a discussion of the Yamada, Li, Vijayakumar and Haga
references is unnecessary for disposition of this rejection.
Appeal 2010-009037
Application 11/284,193

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rejection of claims 1, 3, 9-10, 12, 13, 15, 16, 18-24 and 26-32 under 35
U.S.C. § 103(a) over Fukuda, Yamada, Kondo, Li, Vijayakumar and Haga.

Rejections of Claims 6, 25 and 33 under 35 U.S.C. § 103(a)

The rejections of claims 6, 25 and 33 are based on the rejections
discussed above further in view of Cheung10 and Gordon11. Cheung and
Gordon were cited to meet the limitations specifically of claims 6, 25 and
33. Ans. 9-10, 16. We agree with Appellants that these references do not
remedy the deficiencies of the prior rejections, (App. Br. 24, 40) and
therefore, do not sustain the rejections of claims 6, 25 and 33 for the reasons
given above.

The decision of the Examiner is reversed.

REVERSED
bar

10 US 6,458,673 B1 issued Oct. 1, 2002.
11 US 4,990,286 issued Feb. 5, 1991.