Ex Parte Morita et alDownload PDFPatent Trial and Appeal BoardMar 28, 201311976246 (P.T.A.B. Mar. 28, 2013) Copy Citation 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. 11/976,246 10/23/2007 Etsuo Morita SON-2310/CON2 9063 23353 7590 03/29/2013 RADER FISHMAN & GRAUER PLLC LION BUILDING 1233 20TH STREET N.W., SUITE 501 WASHINGTON, DC 20036 EXAMINER LANGMAN, JONATHAN C ART UNIT PAPER NUMBER 1784 MAIL DATE DELIVERY MODE 03/29/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ETSUO MORITA, YOUSUKE MURAKAMI, GOSHI BIWA, HIROYUKI OKUYAMA, MASATO DOI, and TOYOHARU OOHATA ____________ Appeal 2011-002154 Application 11/976,246 Technology Center 3600 ____________ Before HUBERT C. LORIN, JEFFREY T. SMITH, and MICHAEL P. COLAIANNI, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002154 Application 11/976,246 2 STATEMENT OF THE CASE Etsuo Morita, et al. (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 42 and 44-54. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We affirm.1 THE INVENTION Claim 42, reproduced below, is illustrative of the subject matter on appeal. 42. A crystal film comprising: a coat film within a crystal layer, a threading dislocation from within a buffer layer propagating through said crystal layer to said coat film; a space within said crystal layer, said coat film being between said space and a portion of said crystal layer, wherein said buffer layer is between said crystal layer and a growth substrate. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed June 21, 2010) and Reply Brief (“Reply Br.,” filed Oct. 26, 2010), and the Examiner’s Answer (“Answer,” mailed Aug. 27, 2010). Appeal 2011-002154 Application 11/976,246 3 Kiyoku Morita US 6,153,010 US 7,364,805 B2 Nov. 28, 2000 Apr. 29, 2008 Kazumasa Hiramatsu et al., Fabrication and Characterization of Low Defect Density GaN Using Facet-Controlled Epitaxial Lateral Overgrowth (FACELO), 221 J. CRYSTAL GROWTH 316 (2000). [Hiramatsu] The following rejections are before us for review: 1. Claims 42 and 44-54 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 6-8, 12, and 13 of Morita. 2. Claims 42, 44-46, 48-50, 53, and 54 are rejected under 35 U.S.C. § 102(b) as being anticipated by Hiramatsu. 3. Claims 42, 44-51, 53, and 54 are rejected under 35 U.S.C. § 102(b) as being anticipated by Kiyoku. 4. Claims 47 and 51 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hiramatsu and Kiyoku. 5. Claim 52 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Kiyoku. 6. Claim 52 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hiramatsu and Kiyoku. ISSUES On the question of obviousness-type double patenting, the issue is whether the Examiner erred in finding the claimed subject matter is an obvious variation of that which Morita claims. On the questions of anticipation and obviousness, the major issue is Appeal 2011-002154 Application 11/976,246 4 whether either Hiramatsu or Kiyoku describe a coat film within a crystal layer, a threading dislocation from within a buffer layer propagating through said crystal layer to said coat film. FINDINGS OF FACT We rely on the Examiner’s factual findings stated in the Answer (Ans. 5-9). Additional findings of fact may appear in the Analysis below. ANALYSIS The rejection of claims 42 and 44-54 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 6-8, 12, and 13 of Morita. Taking claim 42 as representative of the rejected claims, the Examiner’s initial reason for making the rejection was, in total: In regards to instant claim[ ] . . . 42 . . . , claim 6 of '805, claims a coat film in a space formed in a crystal layer of a crystal film. Although the instant claims and claim 6 of '805 are not identical they share overlapping structural limitations and are obvious alternatives. Ans. 5. In response to the Appellants’ criticism that the Examiner failed to provide a claim comparison (see App. Br. 8-12), the Examiner provided further elaboration of his position (see Ans. 9-12). Claim 6 of Morita depends on claim 1 which is reproduced below: 1. A crystal film comprising: a crystal layer having a first layer and an upper layer, said first layer being between a base layer and said upper layer, wherein a threading dislocation within said base layer Appeal 2011-002154 Application 11/976,246 5 propagates into said first layer, wherein a pit extends into said first layer, said threading dislocation terminating at said pit, and wherein said upper layer covers said pit, the covered pit being a space between said first layer and said upper layer. Claim 6 reads: “6. A crystal film according to claim 1, wherein a coat film is on an inner surface of said space.” The question here is whether the claimed invention is an obvious variation of the invention claimed in claim 6 of Morita. Comparing claim 6 of Morita with instant claim 42, it becomes readily apparent that they differ in their description of the threading dislocation. Morita claim 1 provides for “a threading dislocation within [a] base layer propagates into [a] first layer, wherein a pit extends into said first layer, said threading dislocation terminating at said pit.” Instant claim 42 provides for “a coat film within a crystal layer, a threading dislocation from within a buffer layer propagating through said crystal layer to said coat film; a space within said crystal layer, said coat film being between said space and a portion of said crystal layer.” The question becomes whether the instantly claimed “threading dislocation from within a buffer layer propagating through said crystal layer to said coat film” is an obvious variation of the Morita claimed “threading dislocation within [a] base layer propagates into [a] first layer, wherein a pit extends into said first layer, said threading dislocation terminating at said pit.” More succinctly, is a threading dislocation to a coating layer (instant claim 42) an obvious variation of a threading dislocation terminating at a pit Appeal 2011-002154 Application 11/976,246 6 (Morita claim 6). According to the Examiner, it is an obvious variation because [c]laim 6 sets forth a “coat film on an inner surface of said space”, therefore a coat film on an inner surface of the space, as well as the threading dislocation propagating through the crystal layer and terminating at the space, provides the structure instantly claimed of a “threading dislocation from within a buffer layer propagating through said crystal layer to said coat film; (and) a space within said crystal layer, said coat film being between said space and apportion of said crystal layer. Ans. 11-12. The Appellants argue that “the Examiner’s Answer fails to show that a ‘coat film’ of claim 42 on appeal and a ‘space’ in claim 1 of U.S. Patent No. 7,364,805 are intended to be one in the same.” Reply Br. 4 (emphasis omitted). After careful review of the record, we agree with the Appellants. As instantly claimed, the threading dislocation runs through a crystal layer to a coating film. By contrast, the threading dislocation described in claim 1 of Morita runs from a base layer propagates into a first layer of the crystal layer. Claim 6 of Morita applies a coating layer to an inner surface of a pit; that is, a space between said first layer and said upper layer. However, notwithstanding that the first layer appends a coated space, the threading dislocation does not necessarily run through the first crystal layer to the film coating the space. It does not follow that Morita covers a threading dislocation “propagating through said crystal layer to said coat film” as instantly claimed, as the Examiner has argued. At most, claim 6 of Morita describes a threading dislocation propagating into a first crystal layer. Given this, the question further boils down to: is the instantly claimed Appeal 2011-002154 Application 11/976,246 7 crystal film having a threading dislocation “propagating through said crystal layer to said coat film” an obvious variation of the Morita claimed crystal film having a threading dislocation propagating into a first crystal layer? Would it have been obvious to extend the Morita claimed threading location to the coat film as instantly claimed? To that question we do not have a sufficient answer given the discussion provided in the Answer. The Examiner did not reach that question. In our view, the reasoning provided for establishing in the first instance that the subject matter of claim 42 is an obvious variation of what is claimed in claim 6 of Morita is insufficient to carry the Office’s burden of establishing a prima facie case of nonstatutory obviousness-type double patenting for the claimed subject matter over that of claims 6-8, 12, and 13 of Morita. The rejection is reversed. The rejection of claims 42, 44-46, 48-50, 53, and 54 under 35 U.S.C. § 102(b) as being anticipated by Hiramatsu. According to the Examiner, Hiramatsu expressly describes a low temperature GaN buffer layer [and] . . . crystal layer of GaN [and a] . . . mask comprising a coat film of amorphous Si02 [ ] formed in the crystal layer. Epitaxial lateral overgrowth (ELO) is performed resulting in a crystal layer of GaN overgrowing the mask (pg 317, Section 2. Experimental). As seen in Figure 10c and in Figure 7, the ELO results in the formation of a void (i.e. space) within the crystal layer wherein the coat film (SiO2 mask) is between the void (space) and a portion of the crystal layer. As seen in Figure 10c, the threading dislocations (represented by dashed lines), from within the buffer layer, propagate through the crystal layer to the mask (coat film) (pg 317, 2nd col., 2nd paragraph). Ans. 6. The Examiner found from this disclosure read on the claimed Appeal 2011-002154 Application 11/976,246 8 limitation “a coat film within a crystal layer, a threading dislocation from within a buffer layer propagating through said crystal layer to said coat film.” To find that the above disclosure read on the claimed limitation “a coat film within a crystal layer, a threading dislocation from within a buffer layer propagating through said crystal layer to said coat film,” the Examiner necessarily equated Hiramatsu’s mask amorphous SiO2 with the coat film of claim 42; Hiramatsu’s layer of GaN with the crystal layer of claim 42; and, Hiramatsu’s low temperature GaN layer with the buffer layer of claim 42. Figs. 7 and 10c of Hiramatsu are produced below: Appeal 2011-002154 Application 11/976,246 9 Fig. 7 depicts scanning electron microscope (SEM) images of a GaN layer grown by Facet controlled epitaxial lateral overgrowth (FACELO) under certain growth conditions (i.e., Model B is two-step process described in Table 1, page 320). Appeal 2011-002154 Application 11/976,246 10 Fig. 10(c) depicts an SEM image of a GaN layer grown under growth conditions via a second epitaxial lateral overgrowth (ELO) under the Model B growth process described in Table 1, page 320. For Hiramatsu to anticipate the claimed subject matter, it must describe at a minimum, expressly or inherently, that this SiO2 mask [i.e., the coat film] is within the GaN [i.e., the crystal layer]. According to the Appellants, the SiO2 mask [i.e., the coat film] is not within the GaN [i.e., the crystal layer] as the claims call for. App. Br.7. The Examiner disagrees, countering that Hiramatsu’s GaN crystal film comprises a base layer (4.0 micron GaN) and an upper layer (ELO GaN) and it is these layers which together form a GaN crystal film [i.e., the crystal layer] that the SiO2 mask [i.e., the coat film] is within these two. Ans. 13. The Appellants respond by arguing that the SiO2 mask [i.e., the coat film] is not within the Appeal 2011-002154 Application 11/976,246 11 upper layer. Reply Br. 7. We have carefully reviewed Hiramatsu, and based on that review, we find the preponderance of the evidence weighs in favor of the Examiner’s position. On page 322 of Hiramatsu, in discussing Fig. 10(c), it states: “the mask is completely buried with the GaN layer.” This disclosure can only mean that the mask is inside the GaN layer and, accordingly, supports the Examiner’s position that Fig. 10(c) shows the SiO2 mask [i.e., the coat film] is within a GaN crystal film [i.e., the crystal layer]. The Appellants’ argument that Hiramatsu’s SiO2 mask [i.e., the coat film] is not within Hiramatsu’s upper GaN layer does not weaken the Examiner’s position because (a) the claim does not require the coat film to be within an upper in contrast to a lower crystal layer and (b) the Examiner did not take the position that Hiramatsu anticipates the claim by showing the SiO2 mask [i.e., the coat film] within an upper GaN layer. The Appellants also argue that Hiramatsu does not describe threading dislocations from within a buffer layer propagating through the crystal layer to the coat film, as claimed. For Hiramatsu to anticipate the claimed subject matter, it must describe at a minimum, expressly or inherently, threading dislocations from within Hiramatsu’s GaN buffer layer propagating through the GaN [i.e., the crystal layer] to the SiO2 mask [i.e., the coat film]. In that regard the Examiner draws attention to Fig. 10(c), saying “[a]s seen in Figure 10c, the threading dislocations (represented by dashed lines), from within the buffer layer, propagate through the crystal layer to the mask (coat film) (pg 317, 2nd col., 2nd paragraph).” Ans. 6. Appeal 2011-002154 Application 11/976,246 12 We have carefully reviewed Hiramatsu, and based on that review, we find the preponderance of the evidence weighs in favor of the Examiner’s position. Fig. 10(c) plainly shows dashed lines travelling through the GaN buffer layer, GaN crystal layer, and the SiO2 mask [i.e., the coat film] within it. Hiramatsu (bottom of page 323) explains that dislocations (represented by these dashed lines) propagate laterally and “terminate on the surface inside the void.” To get there, the threading dislocations (the dashed lines) must necessarily travel from within the GaN buffer layer and pass through the crystal layer to the coat film within it, as claimed. We therefore find the evidence weighs against the Appellants’ view that “Hiramatsu fails to disclose, teach, or suggest a coat film within a crystal layer, wherein a threading dislocation from within a buffer laver propagates through the crystal layer to the coat film.” App. Br. 18 (emphasis omitted). No other arguments remaining, the rejection is sustained for the foregoing reasons. Claim 49 The Appellants make a separate argument as to claim 49, which further limits the claim 47 coat film as being “formed of an amorphous material.” The argument, in its entirety, is: “Hiramatsu fails to disclose, teach, or suggest the presence of a coat film that is formed of an amorphous material. A review of Hiramatsu reveals that reference being silent as to the presence of a coat film formed of an amorphous material.” App. Br. 18 (emphasis omitted). The rejection did not separately address the patentability of claim 49. Appeal 2011-002154 Application 11/976,246 13 Rather, in response to the Appellants’ argument, the Examiner states that Hiramatsu’s SiO2 mask [i.e., the coat film] is made via a sputtering technique, the result of which is inherently amorphous. Ans. 14. The Examiner also points out that the invention also uses SiO2 films. While we agree that Hiramatsu is silent as to an amorphous material for the coat film, it is not in dispute that it discloses a SiO2 mask (coat film) and, as the Examiner correctly points out, the Appellants likewise suggest using SiO2 for the coat film. See Spec., 18, l. 14. There appears to be no difference between Hiramatsu’s SiO2 mask (coat film) and the SiO2 coat film described in the Specification, which claim 49 reasonably broadly covers. Accordingly, the preponderance of the evidence supports the Examiner’s position that Hiramatsu inherently describes a coat film “formed of an amorphous material” as claimed. For the foregoing reasons, we sustain the rejection. The rejection of claims 42, 44-51, 53, and 54 under 35 U.S.C. § 102(b) as being anticipated by Kiyoku. According to the Examiner, Kiyoku expressly describes A first nitride semiconductor layer, 71, is formed thereon, which reads on the instantly claimed crystal layer. The layer, 71, is etched as seen in the figures thereby forming trenches. A growth control mask, 73 and 74, (instantly claimed coat film), is then sputtered into the trenches. Then subsequently epitaxial lateral overgrowth is performed in order to complete the crystal layer (col. 15, lines 4- col. 18, lines 37). The selective growth mask comprises amorphous materials such as oxides and nitrides, and further may comprise metals such as tungsten, Ir, and Pt, as long as the melting point of the metal is greater Appeal 2011-002154 Application 11/976,246 14 than 1200 degrees. Kiyoku teach that threading dislocations grow from within the buffer layer and into the crystalline layer and propagate to the mask (coat film) (col. 8, lines 5-20). As seen in Figure 1C, the resultant Epitaxial layer overgrowth results in a triangular cavity formed above the coat film (thereby reading on the instantly claimed space) (col. 6, lines 10-21). Ans. 7. We have carefully reviewed Kiyoku and conclude that the Appellants have the better position. The difficulty with the Examiner’s position lies in the Examiner’s interpretation of Figures 7A-7D. According to the Examiner (id. at 15), they show threading dislocations. “[A]lthough Kiyoku fails to specifically show threading dislocations in Figures 7a-7d, the threading dislocations are inherently present in these figures in light of Kiyoku’s teaching of threading dislocations present in the same underlying structure of Figures 6a-6c.” Id. The only disclosure in Kiyoku about “dislocations” per se is in reference to defects in the silicon nitride semiconductor crystals. See col. 6, ll. 20-21 (“the nitride semiconductor crystal 16 [Figs. 1A-1C] indicate crystal defects (penetrating dislocations)”). This provides no help in determining if and where threading dislocations are disclosed in Figs. 7A-7D. Given nothing else, we are limited to our inspection of Figs. 7A-7D. We are unable to ascertain from Figs 7A-7D anything that would support the view that Kiyoku necessarily describes a threading dislocation, let alone “a threading dislocation from within a buffer layer propagating through said crystal layer to said coat film” as the claims require. The preponderance of the evidence does not support the Examiner’s finding that Kiyoku inherently describes “a Appeal 2011-002154 Application 11/976,246 15 threading dislocation from within a buffer layer propagating through said crystal layer to said coat film” as the claims require. Accordingly, the rejection is reversed. The rejection of claims 47 and 51 under 35 U.S.C. § 103(a) as being unpatentable over Hiramatsu and Kiyoku. Claim 47 further limits the crystal film to a crystalline material “made of a III-V compound including at least one element selected from Group 3B elements and at least arsenic (As) and phosphorus (P) selected from Group 5B elements.” Claim 51 further limits the coat film to a metal material. We will affirm the rejection for the reasons given in the Answer. Ans. 8. The Appellants (App. Br. 22-23) have not addressed the substance of the Examiner’s rejection which is, for claim 47, that “[i]t would have been obvious for a routineer in the art to use any viable substrate, for the structure of Hiramatsu, including GaAs, a III-V compound, as Kiyoku has shown that in the art these are known and obvious alternatives” (Ans. 8) and, for, claim 51, that “[i]t would have been obvious for a routineer to use a metal film as an alternative to the SiO2 mask of Hiramatsu, as Kiyoku has shown metal films to be functional and known equivalents in the art” (id.), and not, for example (see App. Br. 22-23), whether Hiramatsu describes threading dislocations as claimed, an issue treated in the rejection of independent claim 42 above. Appeal 2011-002154 Application 11/976,246 16 The rejection of claim 52 under 35 U.S.C. § 103(a) as being unpatentable over Kiyoku. This rejection is directed to claim 52 which depends on claim 42, whose rejection we have reversed above. For the same reasons, we will not sustain the rejection of claim 52 over the cited prior art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”). The rejection of claim 52 under 35 U.S.C. § 103(a) as being unpatentable over Hiramatsu and Kiyoku. Claim 52 further limits the coat film to a metal material that is aluminum (Al), gallium (Ga), indium (In), magnesium (Mg), zirconium (Zr) or titanium (Ti). We will affirm the rejection for the reasons given in the Answer. Ans. 9. The Appellants (App. Br. 22-23) have not addressed the substance of the Examiner’s rejection which is that (a) “Kiyoku teach that the selective etch mask may be any metal having a melting point above 1200 degrees Celsius,” (b) “[t]itanium and Zirconium are metals with a melting point above 1200 degrees Celsius,” and, (c) “it would have been obvious to try zirconium or titanium.” (Ans. 9), and not, for example (see App. Br. 24-25), whether Hiramatsu describes threading dislocations as claimed, an issue treated in the rejection of independent claim 42 above. CONCLUSIONS The rejection of claims 42 and 44-54 on the ground of nonstatutory Appeal 2011-002154 Application 11/976,246 17 obviousness-type double patenting as being unpatentable over claims 6-8, 12, and 13 of Morita is reversed. The rejection of claims 42, 44-46, 48-50, 53, and 54 under 35 U.S.C. § 102(b) as being anticipated by Hiramatsu is affirmed. The rejection of claims 42, 44-51, 53, and 54 under 35 U.S.C. § 102(b) as being anticipated by Kiyoku is reversed. The rejection of claims 47 and 51 under 35 U.S.C. § 103(a) as being unpatentable over Hiramatsu and Kiyoku is affirmed. The rejection of claim 52 under 35 U.S.C. § 103(a) as being unpatentable over Kiyoku is reversed is reversed. The rejection of claim 52 under 35 U.S.C. § 103(a) as being unpatentable over Hiramatsu and Kiyoku is affirmed. DECISION The decision of the Examiner to reject claims 42 and 44- 54 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED bar Copy with citationCopy as parenthetical citation