11205734 (B.P.A.I. May. 29, 2012)

Ex Parte Saito et al

Board of Patent Appeals and InterferencesMay 29, 2012

11205734 (B.P.A.I. May. 29, 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. 11/205,734 08/17/2005 Tateo Saito 4372.P0053US 5662 23474 7590 05/29/2012 FLYNN THIEL BOUTELL & TANIS, P.C. 2026 RAMBLING ROAD KALAMAZOO, MI 49008-1631 EXAMINER CHANDRA, SATISH ART UNIT PAPER NUMBER 1716 MAIL DATE DELIVERY MODE 05/29/2012 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 TATEO SAITO and OSAMU KOBAYASHI __________ Appeal 2010-011050 Application 11/205,734 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, CHUNG K. PAK, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011050 Application 11/205,734 2 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 2, 3, 6, 7, 9-12, 15, 16, 18, and 19. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellants’ invention is said to be directed to a molecule supply source for use in a thin-film forming by heating a material to be formed on a film-forming surface of a solid body or matter into a thin film (Spec. para. [0001]). Claim 19 is illustrative: 19. In a molecule supply source used in a physical vapor deposition process in which an evaporation source melts a film- forming material and generates evaporated molecules of the film-forming material which are directed from the molecule supply source under a vacuum onto a film-forming surface of a substrate to form a thin film thereon, the improvement comprising said molecule supply source comprising at least three radially disposed guide passages having a cylindrical passage for discharging the evaporated molecules toward the film-forming surface, and a limiter plate having a molecule pass opening and being provided in at least one guide passage for regulating a molecule passage area in the at least one guide passage. Appellants appeal the following rejections: 1. Claims 2, 3, 6, 7, 9-12, 15, 16, 18, and 19 are rejected under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement. 2. Claims 2, 3, 6, 7, 9-12, 15, 16, 18, and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Motoda (US 5,496,408 issued Mar. 5, 1996) in view of Fujii (US 4,980,204 issued Dec. 25, 1990) and Ohmi (US 5,816,285 issued Oct. 6, 1998) and optionally in view Appeal 2010-011050 Application 11/205,734 3 of Komura (JP 02190473 published July 26, 1990) and Vaartstra (US 2004/0043151 A1 published Mar. 4, 2004). 3. Claims 2, 3, 6, 7, 9-12, 15, 16, 18, and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Motoda in view of Fujii and Jolly (US 3,930,908 issued Jan. 6, 1976) and optionally in view of Komura and Vaartstra. 4. Claims 2, 3, 6, 7, 9-12, 15, 16, 18, and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Jurgensen (US 2003/0054099 A1 published Mar. 20, 2003) in view of Nguyen (US 6,565,661 B1 issued May 20, 2003), Chen (US 6,024,799 issued Feb. 15, 2000), and optionally in view of Majewski (US 6,148,761 issued Nov. 21, 2000), Herchen (US 6,444,040 B1 issued Sept. 3, 2002), and Forrest (US 6,337,102 B1 issued Jan. 8, 2002)1. REJECTION (1): WRITTEN DESCRIPTION Regarding rejection (1), Appellants’ arguments focus on claim 19 only. ISSUE Did the Examiner reversibly err in finding that the phrase “used in a physical vapor deposition process” in claim 19 lacks written descriptive support? We decide this issue in the affirmative. 1 Appellants state in the Appeal Brief filed January 30, 2009 that rejection (4) on appeal includes the Japanese reference 2002-184571 to Suzuki (App. Br. 4). The Examiner withdrew the Suzuki reference as applied prior art in the Final Office Action mailed October 27, 2008 (Final Office Action 7). Appellants’ arguments on pages 10-11 of the January 30, 2009 Appeal Brief reflect this understanding that Suzuki has been removed. Appeal 2010-011050 Application 11/205,734 4 FINDINGS OF FACT AND ANALYSES Appellants argue that the Specification inherently describes the apparatus being used in a physical vapor deposition process (App. Br. 5). Appellants contend that the evidence made of record and included in the Evidence Appendix to the Appeal Brief discloses that physical vapor deposition involves the atom-by-atom transfer of material from the solid phase to the vapor phase and back to the solid phase gradually building up the film on the surface being coated (id. at 4-5). Appellants argue that paragraph [0001] of the Specification describes a physical vapor deposition process such that it would be readily apparent to an ordinarily skilled artisan that the presently claimed invention is used in a physical vapor deposition process (id. at 5). The Examiner finds that Appellants’ Specification describes a process that is applicable to both a physical vapor deposition and a chemical vapor deposition process (Ans. 17). The Examiner reasons that Appellants’ paragraph [0001] disclosure also applies to chemical vapor deposition processes where a solid precursor is melted and the vapor is transported to the substrate surface by a carrier gas. Id. The Examiner finds that “it won’t be readily apparent to one of ordinary skill in the art from reading the present specification that the presently claimed invention is used in a physical vapor deposition process.” Id. To satisfy the written description requirement under 35 U.S.C. § 112, first paragraph, the disclosure of the application must reasonably convey to those skilled in the art that the inventor had possession as shown in the disclosure of the claimed subject matter as of the filing date. Ariad Pharms., Appeal 2010-011050 Application 11/205,734 5 Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). Determining whether the claim language satisfies the written description requirement is a question of fact. Id. The Examiner’s explanation in the Answer supports Appellants’ position that the Specification reasonably conveys possession of the claimed physical vapor deposition feature of claim19. Specifically, the Examiner finds that Appellants have described a process that is applicable to both chemical vapor deposition and physical vapor deposition, which means that the Specification must reasonably convey to one skilled it the art possession of the use of the claimed apparatus in a physical vapor deposition process. The Examiner’s statement comports with the evidence provided by Appellants which states that chemical and physical vapor deposition have much in common and that both deposition processes start by vaporizing a solid surface where the volatilized material is transported to a surface for deposition by condensation or decomposition (Evidence App’x, “Vapor Deposition” Preface vii; Chap. 1 “Vapor Deposited Materials” 5)2. The Examiner’s statement that it will not be readily apparent that the apparatus is used in a physical vapor deposition process fails to apply the proper standard for determining compliance with the written description requirement as denoted in the Ariad citation above. Under the proper standard, we find that the written description reasonably conveys to one skilled in the art that Appellants had possession of using the apparatus in a physical vapor deposition process. For these reasons and on this record, we reverse the Examiner’s § 112, first paragraph, rejection. 2 VAPOR DEPOSITION (Carroll F. Powell, Joseph H. Oxley, & John M. Blocher, Jr. eds., John Wiley & Sons, Inc. 1966). Appeal 2010-011050 Application 11/205,734 6 REJECTIONS (2) TO (4) Appellants’ arguments focus on claim 19 only (App. Br. 5-11). ISSUE Did the Examiner reversibly err in determining that the apparatus structure resulting from the combination of Motoda, Fujii, and Ohmi or Jolly in further optional combination with Vaartstra or Komura or the apparatus structure resulting from the combination of Jurgensen, Nguyen and Chen in further optional combination with Majewski, Herchen and Forrest would have been capable of being used in a physical vapor deposition process? We decide this issue in the negative. FINDINGS OF FACT AND ANALYSIS Appellants argue with regard to each rejection that the prior art is directed to chemical vapor deposition processes, not a physical vapor deposition process as required by the claims (App. Br. 7-11). Appellants contend, for example, that Motoda is directed to a chemical vapor deposition process and so does not disclose an evaporation source that generates evaporated molecules (id. at 7). Appellants argue that there is no teaching or suggestion to modify the chemical vapor deposition processes of Ohmi and Motoda in a manner to yield the presently claimed invention that is directed to physical vapor deposition (id. at 8). Appellants’ arguments fail to address the Examiner’s proper claim construction which indicates that the claimed use of the molecule supply source in a physical vapor deposition process is merely an intended use of Appeal 2010-011050 Application 11/205,734 7 the claimed device (Final Office Action 3; Ans. 5-6). Based on this proper construction of the claim, the Examiner reasons that the structure resulting from the combination of the applied prior art would have been inherently capable of use in a physical vapor deposition apparatus where an evaporation source melts a film-forming material (Ans. 6). Appellants do not specifically respond to this determination of the Examiner. Though Appellants contend that Motoda and Jurgensen do not teach radially disposed guide passages having a cylindrical passageway and a limiter plate having a molecule pass opening (App. Br. 7 and 11), these arguments do not specifically contest or show error in the Examiner’s findings regarding Motoda and Jurgensen teaching radially extending passages or the modification of Motoda or Jurgensen by the secondary references to arrive at the missing features of the respective primary reference (Ans. 5-8; 9-12). We, like the Examiner, do not find any structural difference between the claimed invention and the structure resulting from the combination of the applied prior art. Therefore, we agree with the Examiner that the molecule supply source resulting from the combination of the applied prior art is capable of use in a physical vapor deposition process. For the above reasons, we find that the preponderance of the evidence favors the Examiner’s conclusion of obviousness. On this record, we affirm the Examiner’s § 103 rejections (2) to (4). DECISION The Examiner’s decision 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. Appeal 2010-011050 Application 11/205,734 8 ORDER AFFIRMED bar