Ex parte CAVA et al.

Board of Patent Appeals and Interferences

Apr 29, 1998

08156953 (B.P.A.I. Apr. 29, 1998)

Application for patent filed November 19, 1993. 1
According to the appellants, this application is a
continuation of Application 07/940,426, filed September 4,
1992.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROBERT J. CAVA and
CHANG-BEOM EOM

_____________
Appeal No. 95-3898
Application 08/156,9531
______________
ON BRIEF
_______________
Before THOMAS, JOHN D. SMITH and BARRETT, Administrative
Patent Judges.
THOMAS, Administrative Patent Judge.
Appeal No. 95-3898
Application 08/156,953
2
DECISION ON APPEAL
Appellants have appealed to the Board from the examiner’s
final rejection of claims 1 to 8, which constitute all the
claims in the application.
Representative claim 1 is reproduced below:
1. A device comprising a substrate and a plurality of
compositionally distinguishable thin film layers formed on
said substrate characterized in that at least one layer of
said plurality comprises an epitaxial region of Sr Ca RuOx 1-x 3
where O#x#1 wherein said region has essentially isotropic
electrical conductivity.
The following references are relied on by the examiner:
Hoekje et al. (Hoekje) 3,990,957 Nov. 9,
1976
Kidoh, et al. (Kidoh), “Ferroelectric Properties of Lead-
Zirconate-Titanate Films Prepared by Laser Ablation,” Appl.
Phys. Lett., vol. 58, pp. 2910-2912, June 24, 1991.
Lichtenberg, et al. (Lichtenberg), “Sr RuO : A Metallic2 4
Substrate for the Epitaxial Growth of Yba Cu O ,” Appl. Phys.2 3 7-*
Lett., vol. 60, pp. 1138-1140, March 2, 1992.
Claims 1 to 8 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness, the examiner relies upon Hoekje in
Appeal No. 95-3898
Application 08/156,953
As indicated at pages 2 and 10 to 11 of the answer, the2
examiner has withdrawn a rejection of claim 8 under the second
paragraph of 35 U.S.C. § 112.
3
view of Lichtenberg as to claims 1 to 3 and 6 to 8, with the
addition of Kidoh as to claims 4 and 5. 2
Rather than repeat the positions of the appellants and
the examiner, reference is made to the brief and the answer
for the respective details thereof.
OPINION
Inasmuch as we are in agreement with the well-reasoned
positions and legal-factual analysis of the teachings of the
references expressed by the examiner in the responsive
arguments portion of the answer beginning at page 6 through
the end of the answer, we will sustain both rejections of the
claims under 35 U.S.C. § 103. We will not, for the sake of
brevity, repeat that which has been clearly set forth by the
examiner in this portion of the answer. To round-out the
examiner’s detailed art-based analysis of the claimed
invention and teachings and suggestions of the references
relied upon and appellants’ arguments, we add the following.
Appeal No. 95-3898
Application 08/156,953
4
The examiner’s above-noted portion of the answer takes as
its starting points the teachings and suggestions in Hoekje.
However, a detailed, considered study of the examiner’s
position leads us to conclude that just as well Lichtenberg
may have been properly used as a starting point from which to
analyze the collective teachings and suggestions from an
artisan’s perspective, as the examiner has done, to arrive at
the conclusion of the obviousness of the present subject
matter on appeal. The examiner’s reasoning clearly sets forth
a prima facie case of obviousness of the desirability and/or
motivation to have combined the collective teachings and
suggestions of the references from an artisan’s perspective,
contrary to the assertions made by appellants in the brief as
to the Hoekje-Lichtenberg combination. The examiner’s
position even considers the merits and opinions of declarant
Donald Murphy in the examiner’s analysis. Significantly,
there is no reply brief to rebut the examiner’s reasoning and
positions set forth in this portion of the answer.
To embellish upon the examiner’s reasoning of
combinability, the entire first paragraph of Lichtenberg
indicates that the art as well as the authors of Lichtenberg’s
Appeal No. 95-3898
Application 08/156,953
5
article continued to search for desirable metals that were
compatible with high temperature superconductors. This
paragraph as well as the remaining portions of Lichtenberg’s
article indicates that the art desired to minimize lattice
mismatches between layered materials to increase overall
conductivity. The same may be said of the resistivity
measurements in various planes of orientation.
This first paragraph of Lichtenberg at column 1 on page
1138 also indicates that SrTiO was considered in the art to3
be a standard insulating substrate for the growth of
superconducting copper oxide films, which is the same basic
substrate utilized by appellants in their disclosed, but
unclaimed invention. The paragraph in the middle of the
second column at page 1139 of Lichtenberg also indicates that
certain epitaxial relationships existed between well known
superconductor materials and their substrates. This paragraph
also indicates that the Sr RuO , utilized primarily in2 4
Lichtenberg as a substrate for the growth of superconducting
materials, has an in-plane alignment of the perovskite axes of
the film and the substrate. Since this Sr RuO is stated to2 4
have perovskite axes, this alone would have suggested to the
Appeal No. 95-3898
Application 08/156,953
6
artisan, in addition to the examiner’s rationale, that the
“family” of perovskite-forming crystal structures listed in
Hoekje would have performed in a similar manner. Indeed,
SrRuO is specifically stated at col. 4, lines 9 and 10 of3
Hoekje as having such a perovskite crystalline structure. In
any event, the examiner makes good use of the teaching at the
bottom of the first column of Lichtenberg at page 1140 which
indicates that Sr RuO likely could have been grown by standard2 4
thin-film techniques on commonly used substrates such as
SrTiO . Obviously then, in line with the examiner’s3
reasoning, it would have been obvious to have used SrRuO in a3
similar manner.
In our view, the examiner’s art-based reasoning expressed
in the responsive arguments portion of the answer does not
lead us to reverse the rejection even though it sets forth a
rationale which may be fairly characterized as a generally
disfavored obvious to try approach. However, obviousness does
not require absolute predictability of success, only a
reasonable expectation of success. In re O’Farrell, 853 F.2d
894, 903-904, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988). Indeed,
it is stated, as expressed and noted by the examiner, at
Appeal No. 95-3898
Application 08/156,953
7
columns 3 and 4 of Hoekje that there existed in the art the
preferred perovskite crystal structure materials and mixtures
thereof of those set forth in the generic formula in claim 1,
even as modified by dependent claims 2 and 3. This portion of
Hoekje even sets forth the preferred compound of SrRuO , the3
same material the bulk of appellants’ own disclosure is
directed to. Indeed, in light of what was well known in the
art, even as represented by appellants’ own prior art
discussion as well as that in Lichtenberg, there were well
known thin film manufacturing processes. Overall, the
collective teachings of both references clearly would have led
the artisan to a relatively limited number of possibilities
utilizing conventional techniques with relatively specific
guidance.
The positions set forth by the examiner in the responsive
arguments portion of the answer appear to have addressed the
arguments presented by appellants in the brief as to the
rejections under 35 U.S.C. § 103. Additionally, the weight of
the evidence from the teachings and suggestions of Hoekje and
Lichtenberg as well as the positions advocated by the examiner
in this portion of the answer lead us to conclude that thin
Appeal No. 95-3898
Application 08/156,953
8
film layers of the generic compound set forth by appellants in
independent claim 1 on appeal would have been formed in
epitaxial regions which would have exhibited “essentially”
isotropic electrical conductivity.
The position advocated by appellants at page 7 of the
brief as to claims 4 and 5, is misplaced. From the
perspective advocated by the examiner in the responsive
arguments portion of the answer, there are no noted
deficiencies in the combination of Hoekje and Lichtenberg.
Appellants’ position does not contest in any reasonably
specific manner the subject matter of claims 4 and 5 on
appeal. On the other hand, the examiner’s reliance upon Kidoh
and the reasoning at page 10 of the answer, is persuasive.
Additionally, we note that page 1 of appellants’ specification
also recognizes that the formation of ferroelectric layers
adjacent to epitaxial regions was known in the art anyway.
In view of the foregoing, the decision of the examiner
rejecting claims 1 to 8 under 35 U.S.C. § 103 is affirmed.
Appeal No. 95-3898
Application 08/156,953
9
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN D. SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LEE E. BARRETT )
Administrative Patent Judge )
Appeal No. 95-3898
Application 08/156,953
10

S. H. Dworetsky
AT&T Bell Laboratories
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