Ex Parte Meguro et al

Board of Patent Appeals and Interferences

Feb 26, 2009

11055973 (B.P.A.I. Feb. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KIICHI MEGURO,
YOSHIYUKI YAMAMOTO, and TAKAHIRO IMAI
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Appeal 2009-1997
Application 11/055,973
Technology Center 1700
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Decided: February 26, 2009
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Before EDWARD C. KIMLIN, TERRY J. OWENS, and BEVERLY A.
FRANKLIN, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

REMAND TO THE EXAMINER

This application is remanded to the Examiner to afford him the
opportunity of responding to a new argument presented by Appellants in the
Reply Brief for the first time.
Appeal 2009-1997
Application 11/055,973

Appellants’ claimed invention is directed to a diamond single crystal
substrate obtained by a vapor-phase growth method wherein the single
crystal substrate has the recited intrinsic Raman shift. It is the Examiner’s
position that the applied reference, Vichr, teaches a diamond single crystal
substrate obtained by a vapor-phase growth method which inherently has the
properties claimed by Appellants. The Examiner bases the finding of
inherency on the fact that both Appellants and Vichr subject a surface layer
of the substrate to reactive ion etching before vapor-phase growth is
conducted.
Appellants’ principal Brief, for the most part, emphasizes the asserted
differences in properties between the claimed diamond single crystal
substrate and the substrate of Vichr. However, as pointed out by the
Examiner in the Answer, Appellants’ main Brief fails to specify actual
differences in the methods of forming the claimed crystal substrate and the
method employed by Vichr. Appellants’ Reply Brief, however, sets forth a
new argument that “Vichr’s seed substrate has to be selectively etched in a
geometric pattern to form protrusion nucleation structures on the seed
substrate surface prior to single crystal growth thereon” (Reply Br. 3, first
para.), whereas “[i]n contrast to the Vichr patent, it should be readily
apparent from the present detailed description and Examples, that the
claimed diamond single crystal substrates are grown on the seed substrate
surface whose growth surface has been entirely etched, not selectively
etched as with the Vichr patent” (Reply Br. 3, second para.). Appellant
further submits that “[i]n particular, paragraph [0031] at page 12 of the
present specification explicitly states that ‘[u]sing the above-mentioned gas
and pressure makes it possible to remove the processing-modified layer
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Appeal 2009-1997
Application 11/055,973

rapidly and to obtain a flat surface’” (id.). Appellants’ Reply Brief
elaborates further on this point.
Accordingly, this application is remanded to the Examiner for
consideration of Appellants’ new argument presented in the Reply Brief.
The Examiner should consider whether the etched areas of Vichr’s substrate
are processed any differently than Appellants’ entire substrate, and whether
the appealed claims encompass within their scope the etched areas of
Vichr’s substrate.
This remand to the Examiner, pursuant to 37 C.F.R. § 41.50(a)(1)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286
Off. Gaz. Pat. Office 21 (September 7, 2004)) is made for further
consideration of a rejection. Accordingly, 37 C.F.R. § 41.50(a)(2) applies if
a Supplemental Examiner’s Answer is written in response to this remand by
the Board.

REMANDED

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