Ex Parte Linares et al

Patent Trial and Appeal Board

Dec 21, 2015

11009481 (P.T.A.B. Dec. 21, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111009,481 12/10/2004
21186 7590 12/23/2015
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
Robert C. Linares
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1914.005US2 2004
EXAMINER
KUNEMUND, ROBERT M
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
12/23/2015 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT C. LINARES and PATRICK J. DOERING
Appeal2014-002226
Application 11/009 ,481 1
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PERCURIAM.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from the decision in
the Examiner's Answer dated October 24, 2013. 2
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
The claims on appeal are directed to methods of forming a synthetic
monocrystalline diamond, methods of fabricating an electrical device, and methods
1 According to Appellants, the real party in interest is Scio Diamond Technology
Corporation. App. Br. 2.
2 Our decision refers to the Appellants' Appeal Brief (App. Br.) filed Aug. 5, 2013,
the Examiner's Answer (Ans.) mailed Oct. 24, 2013, and Appellants' Reply Brief
(Reply Br.) filed Dec. 23, 2013.
Appeal2014-002226
Application 11/009,481
of fabricating an optical device (see, e.g., claims 1, 39, 44, and 51). According to
Appellants, diamond provides a wide and useful range of properties and can be
synthesized with impurities to provide a good semiconductor. Spec. p. 1, 11. 23-25
and p. 3, 11. 9-12. Appellants disclose that when diamond is doped with impurities
to vary electrical properties, the atomic lattice structure of the diamond is changed
and can lead to lattice mismatching and strain between semiconductor layers, such
as when synthetic diamond is grown on a natural diamond substrate. Spec. p. 8, 11.
6-9 and 14--16 and p. 14, 1. 16 top. 15, 1. 3.
Appellants disclose:
When an impurity such as a dopant is introduced into a lattice, the
lattice will expand if the covalent radius of the dopant is higher than
the atoms of the host crystal; conversely, if the dopant is smaller, the
lattice will contract. The space occupied by various atoms in a crystal
lattice has been highly researched and well documented . . . . As such,
it [is] possible to accurately predict the amount of expansion (or
contraction) of the lattice.
Spec. p. 13, 11. 2-7. Similarly, the Appellants disclose that the dependence of the
lattice constant on the isotope content of the diamond was known at the time of
Appellants' invention. Spec. p. 28, 11. 1-6.
Independent claim 1 is illustrative of the subject matter on appeal and is
reproduced below from the Claims Appendix of the Appeal Brief. The limitations
at issue are italicized.
1. A method of forming a synthetic monocrystalline diamond
comprising the steps of:
a) forming on a substrate by a chemical vapor deposition
process a first synthetic monocrystalline diamond layer incorporating
one or more impurities and one or more carbon isotopes; and
b) selecting concentrations of the one or more carbon isotopes
and the one or more impurities during the formation of the first
synthetic diamond layer, in order to form the first synthetic diamond
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Application 11/009,481
layer with a predetermined lattice constant having a corresponding
level of lattice strain and a known spin state.
App. Br. 16.
We provide the following comments on the status of the claims due to the
complicated history of the claim amendments submitted in this application. Claim
39 was canceled via an amendment filed May 19, 2009. Subsequently, an
amendment was submitted on August 10, 2012, which added a new claim 52 and
omitted claim 39. A Notice of Non-Compliant Amendment was mailed August 17,
2012, in response to the amendment of August 10, 2012, indicating that claim 39
was missing. In response, an amendment was filed September 17, 2012 that
renumbered claims 40-5 2 as claims 3 9-51. The amendment of September 1 7,
2012 was entered, at which point claims 1-51 were under examination.
Subsequent to the Final Office Action mailed November 16, 2012, an amendment
was filed March 18, 2013 that also omitted claim 39. A Notice ofNon-Compliant
Amendment and an Advisory Action were issued on April 5, 2013, which stated
the amendment of March 18, 2013 was not entered. An amendment was submitted
April 16, 2013 that listed claim 39 as canceled and included claims 40-52 in the
listing of the claims. An Advisory Action issued on May 1, 2013 stated that this
amendment was also not entered.
In view of the above, the amendment filed September 17, 2012 is the last
amendment that was entered. Therefore, claims 1-51, as set forth in the Claims
Appendix of Appellants' Appeal Brief, are pending. 3
3 We note claim 39 is not included in the non-statutory obviousness-type double
patenting rejections or the § 103 rejections. Claim 40, which was renumbered as
claim 39 via the amendment of September 17, 2012, was previously included in a
non-statutory obviousness-type double patenting rejection and a § 103 rejection in
the Non-Final Office Action mailed February 10, 2012. In the event of further
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Application 11/009,481
The claims on appeal stand rejected as follows:
(1) Claims 1-50 under 35 U.S.C. § 112, second paragraph, as indefinite
(designated as a new ground of rejection in the Examiner's Answer4);
(2) Claims 1-24, 31-37, and 46-51under35 U.S.C. § 103(a) as
unpatentable over Y oder5 in view of Herb 6 and Anthony; 7
(3) Claims 25-30 under 35 U.S.C. § 103(a) as unpatentable over Yoder in
view of Herb and Anthony;
(4) Claims 38 and 40-45 under 35 U.S.C. § 103(a) as unpatentable over
Yoder in view of Anthony, Herb, and Vichr; 8
(5) Claims 1-38 and 40-51 on the ground ofnonstatutory obviousness-
type double patenting as being unpatentable over claims 1--42 of U.S. Patent No.
6,582,513; 9 and
(6) Claims 1-38 and 51 on the ground ofnonstatutory obviousness-type
double patenting as being unpatentable over claims 1--45 of U.S. Patent No.
6,858,080. 10
B. DISCUSSION
1. Rejection of claims 1-50 as indefinite
The Examiner rejects claims 1-50 as indefinite, concluding that the term
"predetermined" does not limit the claims and merely recites determination
prosecution, the Examiner should consider whether to include claim 39 in those
rejections.
4 Ans. 6.
5 Yoder, US 5,404,835, issued Apr. 11, 1995.
6 Herb et al., US 5,496,596, issued Mar. 5, 1996 (hereinafter "Herb").
7 Anthony et al., US 5,419,276, issued May 30, 1995 (hereinafter "Anthony").
8 Vichr et al., EP 0 573 943 Al, published Dec. 15, 1993 (hereinafter "Vichr").
9 Linares et al., US 6,582,513 Bl, issued June 24, 2003.
10 Linares et al., US 6,858,080 B2, issued Feb. 22, 2005.
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Appeal2014-002226
Application 11/009,481
beforehand. The Examiner cites Seagram & Sons, Inc. v. Marz all, 180 F .2d 26
(D.C. Cir. 1950), for support. Ans. 6.
The Examiner appears to take the position that the term "predetermined"
renders claims 1-50 indefinite per se. However, there are no per se rules of
unpatentability. Cf In re Ochiai, 71F.3d1565, 1572 (Fed. Cir. 1995) ("[R]eliance
on per se rules of obviousness is legally incorrect and must cease").
In Seagram & Sons, the Court concluded that the term "[p]redetermined"
rendered the claim indefinite by calling into question whether the claim was
directed to Appellants' invention. Seagram & Sons, 180 F.2d at 28. The same
question does not arise in this case. One of ordinary skill in the art would
understand that the term "predetermined," as recited in the claims on appeal,
means that concentrations of carbon isotopes and impurities are selected before the
diamond is formed to form a diamond layer having a preselected lattice constant.
Reply Br. 2.
In sum, the term "predetermined" does not render claims 1-50 indefinite.
Therefore, the § 112, second paragraph, rejection of claims 1-50 is not sustained.
2. Rejection of claims 1-24, 31-37, and 46-50 under 35 U.S.C.
§ 103 over Yoder, Herb, and Anthony
The Examiner finds Yoder discloses a method of depositing a single crystal
diamond but does not disclose selecting concentrations of dopants and isotopes.
Ans. 4. The Examiner finds Herb discloses a method of depositing a diamond
layer on a substrate from gases. Ans. 4. The gases disclosed by Herb can be
varied in impurity and isotope content, which change the lattice of the diamond.
Ans. 4. The Examiner further finds Anthony discloses isotopic variations in single
crystal diamonds. Ans. 4. The Examiner concludes it would have been obvious to
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Application 11/009,481
one of ordinary skill in the art to modify the process of Yoder in view of Herb and
Anthony to determine lattice constants before deposition to deposit a desired
diamond. Ans. 4--5.
Appellants argue Herb does not teach the selection of concentrations of
isotopes and impurities to obtain a predetermined lattice constant. App. Br. 12 and
Reply Br. 3. In particular, Appellants contend Herb discloses that lattice
inhomogeneities cause phonon scattering and reduce thermal conduction but does
not disclose selecting both doping and isotope concentrations to obtain desired
properties. App. Br. 12 and Reply Br. 3. Appellants argue Anthony does not add
to the teachings of Herb and also does not teach or suggest the selection of
concentrations of isotopes and impurities to obtain a predetermined lattice
constant. App. Br. 13 and Reply Br. 3--4.
The Appellants' arguments are not persuasive of reversible error. While
Herb does not explicitly disclose selecting concentrations of one or more carbon
isotopes and one or more impurities to form a synthetic diamond layer with a
predetermined lattice constant, as recited in claim 1, Herb discloses the effects of
lattice inhomogeneities upon phonon scattering, and therefore thermal
conductivity. Herb col. 2, 11. 23-26 and 31-39. Herb discloses that lattice
inhomogeneities include chemical impurities and isotopic inhomogeneities. Herb
col. 2, 11. 23-26 and 31-39. As stated by the Examiner, Herb demonstrates that the
concentrations of lattice inhomogeneities are a result-effective variable with
respect to thermal conductivity. Ans. 7. Anthony discloses that a chemically and
isotopically pure carbon has a greater thermal conductivity than carbon with
chemical and isotopic impurities. Anthony col. 2, 11. 48-52. Similar to Herb,
Anthony demonstrates that chemical and isotopic impurities affect thermal
conductivity.
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Application 11/009,481
As a result, the disclosures of Herb and Anthony would have guided one of
ordinary skill in the art to control the concentrations of chemical and isotopic
impurities to select the desired thermal conductivity and thus form a diamond
having a predetermined lattice constant.
Appellants further argue that Herb is directed to a polycrystalline structure
and is unrelated to monocrystalline diamond or lattice strain. App. Br. 12 and
Reply Br. 3. These arguments also do not demonstrate a reversible error because
the arguments do not explain how one of ordinary skill in the art would have
lacked a reasonable expectation of success in applying the teachings of Herb,
which regard the effects of lattice inhomogeneities upon the thermal conductivity
of polycrystalline diamond, to the monocrystalline diamond of Yoder, such as to
control the content of lattice inhomogeneities and affect the thermal conductivity
of monocrystalline diamond. In this regard, we note that Anthony is evidence that
chemical and isotopic impurities also affect thermal conductivity in single crystal
diamonds.
For the reasons discussed above and those discussed in the Examiner's
Answer, the§ 103 rejection of claim 1 is sustained. Claims 2-24, 31-37, and 46-
50 have not been argued separately and therefore fall with claim 1. 37 C.F.R.
§ 41.37(c)(iv).
3. Rejection of claim 51 under 35 U.S.C. § 103 over Yoder, Herb,
and Anthony
The rejection of claim 51 over Yoder, Herb, and Anthony is based upon the
findings and conclusions discussed above for the rejection of claims 1-24, 31-37,
and 46-50 over Yoder, Herb, and Anthony. Claim 51 recites, inter alia, "[a]
method of forming a synthetic monocrystalline diamond having a selected
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Application 11/009,481
electrical conductivity and a selected lattice constant" and selecting an isotope
concentration to change a lattice constant of the synthetic monocrystalline diamond
to the selected lattice constant and to change the electrical conductivity of the
diamond to the selected electrical conductivity.
Appellants contend the rejection of claim 51 does not properly address claim
51 and does not mention electrical conductivity. App. Br. 14 and Reply Br. 5.
"[T]he examiner bears the initial burden, on review of the prior art or on any
other ground, of presenting a prima facie case of unpatentability. If that burden is
met, the burden of coming forward with evidence or argument shifts to the
applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Here, the
Examiner has not responded to Appellants' arguments or otherwise demonstrated
that the combined teachings of Yoder, Herb, and Anthony render obvious the
method of claim 51, including its recitations of selecting an isotope concentration
to change an electrical conductivity of diamond to a selected electrical
conductivity. Therefore, the Examiner has not met the initial burden of setting
forth a prima facie case of obviousness.
For the reasons expressed above, we reverse the § 103 rejection of claim 51
over Yoder in view of Herb and Anthony.
4. Obviousness Rejections of claims 25-30, 38, and 40-45
Claims 25_30, 38, and 40-45 have not been argued separately and therefore
fall with claim 1. 11 37 C.F.R. § 41.37(c)(iv).
5. Double Patenting Rejections of claims 1-38 and 40---51
11 App. Br. 13 and Reply Br. 4.
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Appellants acknowledge the non-statutory obviousness-type double
patenting rejections and state that Appellants will consider a terminal disclaimer
upon the allowance of the claims. Reply Br. 1. No arguments regarding the
propriety of the rejection have been proffered by Appellants. We therefore
summarily affirm the Examiner's non-statutory obviousness-type double patenting
rejections of claims 1-3 8 and 40-51.
C. DECISION
On the record before us, we:
A. reverse the Examiner's decision to reject claims 1-50 under 35 U.S.C.
§ 112, second paragraph, as indefinite;
B. affirm the Examiner's decision to reject claims 1-24, 31-37, and 46-50
under 35 U.S.C. § 103(a) as unpatentable over Yoder in view of Herb and
Anthony;
C. reverse the Examiner's decision to reject claim 51 under 35 U.S.C.
§ 103(a) as unpatentable over Yoder in view of Herb and Anthony;
D. affirm the Examiner's decision to reject claims 25-30 under 35 U.S.C.
§ 103(a) as unpatentable over Yoder in view of Herb and Anthony;
E. affirm the Examiner's decision to reject claims 38 and 40-45 under
35 U.S.C. § 103(a) as unpatentable over Yoder in view of Anthony, Herb, and
Vic hr;
F. affirm the Examiner's decision to reject claims 1-38 and 40-51 on the
ground of nonstatutory obviousness-type double patenting as being unpatentable
over claims 1--42 of U.S. Patent No. 6,582,513; and
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G. affirm the Examiner's decision to reject claims 1-38 and 51 on the
ground of nonstatutory obviousness-type double patenting as being unpatentable
over claims 1--45 of U.S. Patent No. 6,858,080.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED-IN-PART
cdc
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