Ex Parte Dassel

Patent Trial and Appeal Board

Jun 7, 2018

13247354 (P.T.A.B. Jun. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/247,354 09/28/2011 Mark W. Dassel
500 7590 06/11/2018
SEED INTELLECTUAL PROPERTY LAW GROUP LLP
701 FIFTH A VE
SUITE 5400
SEATTLE, WA 98104
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.
240125.401 8134
EXAMINER
YU, YUECHUAN
ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
06/11/2018 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):
USPTOeAction@SeedIP.com
pairlinkdktg@seedip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK W. DASSEL
Appeal2017-001920
Application 13/247,354 1
Technology Center 1700
Before MARK NAGUMO, RAEL YNN P. GUEST, and
JEFFREY R. SNAY, Administrative Patent Judges.
Opinion for the Board filed by RAEL YNN P. GUEST, Administrative
Patent Judge.
Opinion Dissenting filed by MARK NAGUMO, Administrative Patent
Judge.
GUEST, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 2, 4--14, 16-23 and 29--32. See Examiner's Final
Office Action 2, dated February 5, 2016 ("Final Act."); Examiner's Answer
1 Appellant identifies the real party in interest as Rokstar Technologies
LLC. Appellant's Appeal Brief at 2 (filed Feb. 29, 2016 (hereinafter "Br.")).
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Application 13/247,354
2, dated September 16, 2016 ("Ans."). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appellant's invention is directed to mechanically fluidized reactors
suitable for the production of silicon, e.g., polysilicon, for example via
chemical vapor deposition. Specification ("Spec.") 1: 8-10. According to
the Specification, the invention is directed to the mechanical suspension or
fluidization of dust, beads, or other particles, obviating the need for a
fluidizing gas stream. Id. at 4:1-3.
Independent claim 1 is exemplary of the subject matter on appeal and
is reproduced below:
1. A chemical vapor deposition reactor system
compnsmg:
a containment vessel having an interior and an exterior;
a pan located in the interior of the containment vessel
and mounted to move at least vertically with respect to the
containment vessel during operation, the pan having a base, a
perimeter, and a perimeter wall that extends upwardly from the
base about the perimeter of the pan, the perimeter wall having a
top, the base of the pan having a bottom surface that is flat
which, with the at least one perimeter wall, forms a partially
enclosed container which in use receives a plurality of dust,
beads or other particulate, the pan open to the interior of the
containment vessel about the top of the perimeter wall to allow
a resulting reaction product to exit from the pan over the
perimeter wall during movement of the pan while the pan is
sealed in the interior of the containment vessel;
a mechanical vibration assembly drivingly coupled to the
pan and operable to mechanically vibrate the pan with respect
to the containment vessel to create a mechanically fluidized bed
of the plurality of dust, beads or other particulate carried by the
pan;
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a source of a first chemical species selected from those
chemical species which decompose on heating to one or more
second chemical species, one of which is a substantially non-
volatile species prone to deposit on a hot surface in near
proximity, the source fluidly coupled to the mechanically
fluidized bed of the plurality of dust, beads or other particulate
carried by the pan;
a heater that, in operation, supplies heat to the
mechanically fluidized bed via the base of the pan, the entirety
of the heater disposed within a sealed container and disposed
below at least a portion of the bottom surface of the base of the
pan, the heater thermally insulated from the interior of the
containment vessel and thermally uninsulated proximate the
bottom surface of the base of the pan;
at least one controller operably coupled to the heater that,
in operation, causes the heater to provide a thermal output that
maintains a temperature of the mechanically fluidized bed
within a range that is above a bulk temperature of a gas which
includes the first chemical species, the gas external to the
mechanically fluidized bed and wherein, in operation, the gas is
exposed to the mechanically fluidized bed; and
a collection device positioned relatively beneath the pan
and that extends beyond the entire perimeter of the pan to catch
the resulting reaction product that vibrates over the perimeter
wall of the pan during movement of the pan with respect to the
containment vessel.
Br. 37, Claim App.
The Examiner applies the following prior art references.
Komaki2
Komaki2
JP 64-14194
JP HOl-188497 3
Jan. 18, 1989
July 27, 1989
2 For the purpose of this decision, we rely only on the English language
abstract of record.
3 We rely on the computer-generated English language translation of JP
2,637,134, published April 25, 1997, which is of record and the granted form
of the Komaki2 application cited by the Examiner.
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Ichikawa4
Morris
Setty et al.
Iya
Schirrmacher et al.
Jha et al.
Comardo
Sekine et al.
Murakami et al.
Komatsu5
JP H06-177056
us 3,161,483
us 3,963,838
us 4,354,987
us 4,615,993
us 6,190,625
us 2001/0041117
us 6,334,928
us 2008/0057344
JP H06-127924
The Examiner maintains the following rejections:
June 24, 1994
Dec. 15, 1964
June 15, 1976
Oct. 19, 1982
Oct. 7, 1986
Feb.20,2001
Nov. 15, 2001
Jan 1, 2002
Mar. 6, 2008
May 10, 1994
1. Claims 1, 5-9, 11-13, 29-32 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Komaki in view of
Komaki2, Ichikawa, and Comardo;
2. Claim 2 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Komaki in view of Komaki2, Ichikawa,
Comardo as applied to claim 1, and further in view of Setty;
3. Claim 4 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Komaki in view of Komaki2, Ichikawa,
Comardo as applied to claim 1, and further in view of Morris;
4. Claim 10 is rejected underpre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Komaki in view of Komaki2, Ichikawa,
4 We rely on the computer-generated English language translation of record.
5 We rely on the computer-generated English language translation of record.
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Comardo as applied to claim 1, and further in view of
Schirrmacher and Iya;
5. Claim 14 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Komaki in view of Komaki2, Ichikawa,
Comardo as applied to claim 13, and further in view of Komatsu
and Jha;
6. Claims 16, 17, and 21 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Komaki in view of Komaki2,
Ichikawa, Comardo as applied to claim 13, and further in view of
Sekine and Murakami;
7. Claims 18-20 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Komaki in view of Komaki2, Ichikawa,
Comardo, Sekine, and Murakami as applied to claim 16, and
further in view of Setty; and
8. Claim 22 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Komaki in view of Komaki2, Ichikawa, and
Comardo as applied to claim 1, and further in view of I ya.
Unless otherwise indicated, we adopt the Examiner's findings in the
Answer as our own and add any additional findings of fact appearing below
for emphasis.
II. DISCUSSION
A. Rejections based on Komaki, Komaki2, Ichikawa, and Comardo
With respect to the first rejection, Appellant presents arguments with
respect to claim 1 separately, claims 7, 11, and 12 as a group, claim 23,
claim 4, claim 10, and claim 14 separately. Accordingly, we address
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separately claim 1, as representative of all of the claims so rejected, claim 7
as representative of the group of claims 7, 11, and 12, claim 23, claim 4,
claim 10, and claim 14.
Claim 1
Initially, Appellant contends that the Examiner's specific rejection is
unclear and does not provide the requisite clear articulation of the findings
of fact and the rationale that allegedly support the rejection. Br. 14. In
particular, Appellant argues it is not clear whether the rejection is
modifying the pan ofKomaki with the pan of Komaki2, or replacing the
rocking/vibrating mechanism 5 of Komaki with the rocking equipment of
Komaki2. Id.
We agree with the Examiner that the record is clear that the
pan/tray/ dish of Komaki and Komaki2 are substantially the same feature.
See Ans. 23; see also Final Act. 2-3 (referring to Komaki/Komaki2's
teaching). Accordingly, it is reasonable to conclude that the teachings of
Komaki2 are directly applicable to the teachings of Komaki, and vice versa,
as both are related to diamond deposition using a vibrating fluidized bed.
Moreover, the Examiner has adequately explained the reason why the skilled
artisan would have modified Komaki (which teaches a containment vessel,
which must be present but is not illustrated in Komaki2) to have the
rocking/vibrating mechanism of Komaki2, which is capable of vertical and
transverse movement, to obtain the express flow movement and uniform
particle coating taught by Komaki2. See Ans. 3, 24.
Appellant further argues that, given Komaki2 's teaching of causing
flow and irregular rotation of the granular material so that each granule
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reaches the surface layer, Komaki2 teaches the opposite of the Examiner's
reasoning for combining the references, namely "a more uniform
mixing/movement of the bed." Br. 16.
We are not persuaded that the Examiner erred in the Examiner's
reasoning. Appellant appears to be misinterpreting the Examiner's findings
and reasoning, which are consistent with the teachings of Komaki2.
Komaki2 teaches obtaining uniform deposition by the flow of the granular
materials as the pan vibrates. Komaki2 ("An object of the present invention
is to deposit a diamond efficiently and stably uniformly as much as possible
on the surface of granular material. ... By making granular material flow in
a diamond generation region, ... it found out that a diamond synthesis was
efficiently possible."). Komaki teaches that irregular flow caused by the
vibrating pan allows all of the granular material to reach the surface within
the diamond generation region (i.e., the "uniform mixing" stated by the
Examiner). See Ans. 3, 23-25 (quoting Komaki2, last full i-f on page 2 to the
first full i-f on page 3). This uniform mixing of the particles (having each
particle come to the surface via the irregular flow) occurs even when pan is
vibrated vertically. See Komaki2 ("[A] vertical direction may be available
for vibration.").
We agree with the Examiner that the objective of achieving good
mixing via irregular flow so that all particles reach the surface within the
diamond generating region, is a reason the skilled artisan would have used
the vibrating mechanism of Komaki2. Final Act. 3; Ans. 3.
Appellant contends that the structure of Komaki and Komaki2 do not
have an open pan that is capable of "allow[ing] a resulting reaction product
to exit from the pan over the perimeter wall during movement of the pan
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while the pan is sealed in the interior of the containment vessel," as recited
in the claims. Br. 20. Instead, Komaki and Komaki2 teach keeping the
granular material in the pan and has a filament disposed either within the
pan, as illustrated, or at least adjacent the top of the perimeter wall of the
pan, so as to restrict the flow of granular material within the pan. Br. 19.
Appellant contends that only the contained structure would meet the taught
objective of Komaki2 of avoiding a graphite phase (too high a temperature
or energy density which occurs by having the material float too near the
filament) and an amorphous carbon phase (by having the material not access
a narrow diamond generating region about 5mm from the filament) during
diamond synthesis. Br. 19, 21. Alternatively, Appellant argues that the
Examiner proposes a modification to Komaki/Komaki2 that the pan vibrates
"strongly," in order to meet this claim limitation. Br. 21.
Again, Appellant appears to mischaracterize the Examiner's findings
and reasoning. The Examiner finds that the open pan structure taught by
both Komaki and Komaki2 would be capable of having material overflow
the sidewalls because "[a]ny open top pan, dish or tray has such capability."
Ans. 26; see Final Act. 3. The Examiner finds it of no moment that Komaki
and Komaki2 do not expressly teach using the pan in a manner intended for
material overflow because this claim limitation merely recites an intended
use and does not structurally distinguish the open pan of Komaki/Komaki2.
Ans. 25-26; see Final Act. 3. Thus, Appellant's contention that the
Examiner erroneously proposed modifying the vibration strength in
Komaki/Komaki2 is not persuasive. No such modification was necessary
because the structure was already taught by Komaki2. See Ans. 26.
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We agree with the Examiner that Komaki/Komaki2 does not have to
expressly teach using the pan as recited in the claims if the structure is
capable of performing the function given the intended use. Final Act. 7.
Appellant has not persuasively shown that the Examiner's finding regarding
the capability of Komaki/Komaki2 's pan is in error or that the structure of
Komaki/Komaki2 's pan is lacking any particular structural feature that
would inhibit it from being so used.
Appellant further contends that the Examiner admits that this
overflow function is not possible with the pan of Komaki/Komaki2 based on
the Examiner's statement with respect to the rejection of claim 32. Br. 20
(citing Final Act. 13). With respect to claim 32, the Examiner states: "the
side walls completely enclose the pan, otherwise the grains would spill out
the side while vibrating, which does not appear to be the case, and would
cause the reactor to not function, as the substrate would be lost during
processing." Final Act. 13; Ans. 13.
We disagree with Appellant that the Examiner is making conflicting
statements. We understand the Examiner's statement with respect to claim
32 only to mean that the pan has a sidewall as recited in the claims. In other
words, the sidewall stops the granular material from falling off the side (out
the side) of an otherwise flat base of the container when vibrated. The
Examiner also finds that, as stated in Komaki2, the sidewall plays a role in
the irregular flow of the granular material. See Komaki2 3 ("A flow is
performed in order for granular material to move to the upper and lower
sides, right and left directions, etc., and to be agitated, to average and to
make it each granular material come out to the surface.").
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The Examiner acknowledges that Komaki2 does not expressly teach
that the material overflows the sidewalls. However, this omission is
irrelevant to the Examiner's determination that there is no distinction in the
pan structure that would preclude it from being used such that the material
overflows the sidewalls.
Appellant further contends that the Examiner's reason for the skilled
artisan's use of Comardo' s collection device is not supported by the
evidence because Komaki2 does not teach granular material exiting over
the sidewall of the pan. Br. 23.
While Appellant asserts that Komaki2 teaches away from having
materials overflowing the walls because "such would cause the amorphous
carbon phase" sought to be avoided by Komaki2 (Br. 19 (citing Komaki2,
2:13-15), we find no such teaching in Komaki2. We understand Komaki2
to teach that an amorphous carbon phase occurs specifically when materials,
including materials within the pan, do not reach the diamond generating
region. See Komaki2 2, 2nd full i-f ("[I]t [deposited carbon] will become an
amorphous carbon phase in a place more distant than a diamond generation
region."). We do not agree that Komaki2 necessarily teaches away from
having particles collected via overflowing the walls, once they are fully
diamond-coated. 6 Also, this teaching does not preclude collecting granular
6 Moreover, we note that Komaki2 teaches: "After a diamond deposits, what
particles float and graphitize in a hot section comes out." Komaki2 2: 18-19.
Additionally, we note that Komaki2 refers to drawbacks in batch processes
due to low productivity, suggesting a continuous process in which the end
product must be removed from the material somehow. Komaki2 1 (in
referring to drawbacks of prior art deposition methods, stating "[a]lthough
condition control and the reproducibility of the method of using a substrate
are high, it is a batch method and productivity is low."); Komaki2 4, 2nd full
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particles, whether they be uncoated SiC starting material or SiC coated in
any carbon phase, that incidentally overflow the sidewalls during agitation,
even if unintentional or undesirable. In fact, the Examiner states that a
skilled artisan would find such incidental overflow reasonable considering
that Komaki2 uses "a vibrating tray with very small particles in a low
pressure vacuum environment." Ans. 27.
It is in this context that the Examiner determines that it would have
been obvious to use an "excess material net/collector," such as that taught by
Comardo, "to be able to recover and minimize the loss of processing
materials" and to keep the reactor vessel clean from wayward particles.
Final Act. 4--6; Ans. 6-7. We find the Examiner's rationale persuasive and
consistent with the teaching of the prior art. "[An obviousness] analysis
need not seek out precise teachings [in the prior art] directed to the specific
subject matter of the challenged claim" provided that the Examiner "identify
a reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does."
KSR Int'! v. Teleflex Inc., 550 U.S. 398, 418 (2007). Appellant has not
persuasively shown error in the Examiner's reasoning.
Appellant further contends that Komaki2 does not teach "at least one
controller operably coupled to the heater that, in operation, causes the heater
to provide a thermal output that maintains a temperature of the mechanically
fluidized bed within a range that is above a bulk temperature of a gas which
i-f ("EFFECT OF THE INVENTION A diamond phase can be efficiently
deposited now on a base surface by the present invention, and the synthesis
of a diamond compound abrasive grain and a diamond compound abrasion
resistance grain was attained continuously.") (emphasis added).
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includes the first chemical species, the gas external to the mechanically
fluidized bed." Br. 25-26.
Appellant does not dispute the Examiner's finding that Komaki and
Komaki2 teach a heater and that Ichikawa teaches a controlled heater
positioned not over the products as a filament as taught by Komaki/Komaki2
but as part of the particle pan of a chemical vapor deposition chamber. Final
Rej. 5---6; Ans. 5---6. Nor does Appellant dispute the Examiner's
determination that it would have been obvious for a skilled artisan to use a
controlled bed heater in the process of Komaki/Komaki2 "to heat/provide
specified thermal output to maintain/set specified temperatures of the
substrate/bed, Ichikawa [0024, 0025, 0028, 0034] as part of controlling the
deposition uniformity to reach temperatures of desired levels of film
formation." Id.
Claim 1 is directed to a system, or structure, to be used for chemical
vapor deposition. It is reasonable to find that the controlled pan heater,
taught by Ichikawa, would be capable of meeting the functional and
intended use limitations recited in claim 1. Thus, any controlled pan heater
is capable of being set to "provide a thermal output that maintains a
temperature of the mechanically fluidized bed within a range that is above a
bulk temperature of a gas which includes the first chemical species, the gas
external to the mechanically fluidized bed." This need not be taught by the
particular processes of the prior art as that function is directed towards an
intended use of a chemical vapor deposition provided that the identical
structure is taught in the prior art. Appellant has not persuasively shown that
the heaters taught by Komaki/Komaki2 and controlled as taught by Ichikawa
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lack any particular structural feature that would prohibit the heater from
being so used.
Nonetheless, the Examiner takes the extra step to show that the
claimed temperature differential is obvious in light of the prior art teachings
because "no active deposition/coating or particle formation is occurring,
because otherwise there would be thermal diamond formation everywhere in
the reactor space through which the first chemical/ gas source material is
flown, which does not appear to be the case" and that there is a "a distance-
thermal gradient from the heater/heat source," which in this case is the pan
of Komaki/Komachi2 modified with a heater as taught by Ichikawa. Final
Rej. 6; Ans. 6.
Appellant further argues that the Examiner made an alleged
contradiction between the Examiner's reasoning with respect to this feature
and the Examiner's reasoning with respect to the rejection of claim 14. Br.
27-28. Specifically, and as further discussed below, the Examiner finds that
the bulk gas temperature and fluidized bed temperature relationship must be
met because, otherwise, "thermal diamond formation [would occur]
everywhere in the reactor space," which "does not appear to be the case."
See Final Act. 6. The Examiner reasons that it would be obvious to use a
cooling jacket (as recited in claim 14) "to reduce pyrolytic/thermally
decomposed depositions on the vessel walls." Final Act. 15. Yet, the
Examiner has said that such deposition "does not appear to be the case." Id.
6.
Appellant further contends that the Examiner's finding is improperly
based on a non-English language (Japanese) portion ofKomaki (rather than
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the translated Abstract) for the finding that the bed is heated to 800°C. Br.
27 (citing MPEP § 706.02(II)).
Appellant further contends that the Examiner's finding that the bulk
temperature of the gas near exhaust 10 would be less than 800°C is
unreasonable considering the gas would have to flow past a filament of
1800°C and the tray at 800°C to reach the exhaust pipe 10. Br. 28. The
Examiner responds that a skilled artisan would have understood a distance-
thermal gradient would have extended from the heat source to the areas of
the reactor far from the heat source such as the area near exhaust 10. Ans.
28.
Appellant's arguments are unpersuasive for two reasons. First,
Appellant's arguments do not address the modified teaching of
Komaki/Komaki2 with Ichikawa which provides a heating source in a
fluidized bed pan, rather than an overhead filament. Thus, as noted by the
Examiner, in an arrangement with no other heat source other than the pan, as
taught by Ichikawa, a temperature of the mechanically fluidized bed would
be greater than a bulk temperature of a gas external to the mechanically
fluidized bed, as recited in the claims. We agree with the Examiner that the
temperature changes with the distance between the heat source and any
given area of the containment vessel and that the bulk temperature would
necessarily be lower in areas farthest away from the heat source.
Second, we note that it is not necessary to rely on the untranslated
portions of Komaki because the English language computer translation of
Komaki2, which we have determined to be directed to a substantially
identical deposition process to that of Komaki, expressly and consistently
teaches that "[ t ]he temperature of the granular material in which a diamond
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deposits is about 600-1000 degrees C." Id. at 3:9-10. We agree with the
Examiner that the bulk temperature in the reaction vessel is less than the
deposit temperature of 600-1000 °C otherwise carbon would deposit
everywhere in the chamber. We agree with the Examiner that this "does not
seem to occur." As discussed in detail below with respect to claim 14, this
finding is not inconsistent with the Examiner's rationale for adding a cooling
jacket to the walls of the vessel.
In light of these teachings, it would have been obvious for the pan
heater, as taught by Ichikawa, to provide a thermal output that maintains a
temperature of the mechanically fluidized bed within the desired deposition
temperature range of 600°C to 1000°C, that is above a bulk temperature of
the first chemical species gas. Therefore, the Appellant has not adequately
shown error in the examiner's position and the preponderance of the
evidence supports the examiner's position.
Claim 7
Appellant contends that the Examiner has not adequately provided a
reason to substitute the tray 1 of Komaki with the tray 2 of Komaki2, having
the requisite wall height recited in claim 7, except to say a pan of the height
was known in the art, which is not sufficient to established a prima facie
case of obviousness. Br. 29-30.
As stated above, we agree with the Examiner that the pan/tray/ dish of
Komaki and Komaki2 are substantially the same feature. See Ans. 23; see
also Final Act. 2-3 (referring to Komaki/Komaki2's teaching).
Accordingly, it is reasonable to conclude that the teachings of Komaki2 are
immediately applicable to the teachings of Komaki, and vice versa, as both
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are related to substantially the same diamond deposition process using a
vibrating fluidized bed. As stated by the Examiner, Komaki2 teaches the
wall height of 5-30 mm (0.2-1.2 inches) (page 2 lower left col.) which
overlaps and thus renders obvious the claim wall height of between Yz inch
to 3 inches.
Claim 23
Appellant disputes the Examiner's finding that Komaki2 teaches a pan
comprising Mo (molybdenum), W (tungsten), or SUS steel (stainless steel).
Br. 30 (citing Final Act. 11 ). Appellant asserts that Komaki2 only teaches
that the granular material is Mo or W. Id.
We disagree with the Appellant that Komaki2 does not teach the
container to be made from a metal. Although Appellant cites to portions of
Komaki2 that teach the granular material may also be made from Mo or W
(id.), Appellant does not address where Komaki2 expressly teaches that the
"container" is preferably molybdenum, but alternatively may be tungsten or
stainless steel. Komaki 2, 7th full i-f ("Construction material, such as Wand
SUS, may be sufficient as a container outside Mo."). Therefore, Appellant's
argument is not persuasive of Examiner error.
For these reasons we sustain the Examiner's rejection of Claims 1, 5-
9, 11-13, 29-32 as unpatentable over under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Komaki in view of Komaki2, Ichikawa, and
Comardo. Appellant makes no separate arguments with respect to claims 2
and 16-22 which are separately rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Komaki in view of Komaki2, Ichikawa,
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Comardo, and additional prior art. Accordingly, we sustain these separate
rejections for the same reasons.
Claim 4
Claim 4 is separately rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Komaki in view of Komaki2, Ichikawa, Comardo,
and further in view of Morris. Appellant contends that the Examiner
references modifying "Jenkin" by the teaching of Morris, and note that
Jenkin is not a reference that the Office Action cites in any presently
outstanding rejections. Br. 31.
The Examiner has clarified in the record that reference to "Jenkin" is a
typo-graphical error, and that Morris is intended to further modify Komaki,
as already modified by Komaki2, Ichikawa and Comardo. Ans. 29.
Appellant did not file a Reply brief to provide further comment on this
correction.
Appellant further argues a prima facie case of obviousness was not
met with regard to substituting the vibration assembly of Komaki with the
pulleys of Morris. Br. 31.
We disagree with the Appellant that a prime face case of obviousness
has not been met. Komaki and Komkai2 are silent on the mechanism that is
used in order achieve the vertical and lateral vibration motion. Therefore, a
skilled artisan would realistically look to other references that teach known
mechanisms, such as Morris, for obtaining the desired vibration motion
taught by Komaki2, to achieve the desired purpose of the invention.
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Accordingly, we sustain the Examiner's rejection of claim 4 under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Komaki in view of
Komaki2, Ichikawa, Comardo, and further in view of Morris.
Claim 10
Claim 10 is separately rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Komaki in view of Komaki2, Ichikawa, Comardo,
and further in view of Schirrmacher and Iya. Appellant argues that any
granule that exits from the pan of Komaki/Komaki2 would enter either
the graphite or amorphous carbon phase and, therefore, there would be no
motivation to modify the reactor by adding a hopper including two or more
isolation valves in order to receive dust, beads, or other particulates that
overflow from the pan. Br. 34.
As described above, we find no such teaching in Komaki2 that
particles overflowing the pan would cause either a graphite or amorphous
carbon to form. We understand Komaki2 to teach that an amorphous carbon
phase occurs specifically when materials, including materials within the pan,
do not reach the diamond generating region. See Komaki2 2 ("[I]t will
become an amorphous carbon phase in a place more distant than a diamond
generation region."). Further, as discussed above, inadvertent overflow may
reasonably be expected to occur with the unreacted SiC particles, or particles
with carbon deposited in any phase, including the desired product particles
deposited with diamond phase carbon. Thus, it is reasonable that the skilled
artisan would have collected material, in whatever condition, that might
incidentally overflow the pan of Komaki/Komaki2, for example in a hopper
as taught by I ya, in order to recover this material. Therefore, we affirm the
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Appeal2017-001920
Application 13/247,354
Examiner's rejection in modifying Komaki/Komaki2 with Schirrmacher and
Iya.
Moreover, as discussed in footnote 6 above, we agree with the
Examiner that it would have been obvious for the skilled artisan to make the
process taught by Komaki/Komaki2 a continuous process in which case the
use of a hopper particularly to collect desired product would have been
obvious. Final Rej. 14--15; Ans. 14--15 and 29--30.
Accordingly, we sustain the rejection of claim 10 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Komaki in view of Komaki2,
Ichikawa, Comardo, and further in view of Schirrmacher and Iya.
Claim 14
Claim 14 is separately rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Komaki in view of Komaki2, Ichikawa, Comardo,
and further in view of Komatsu and Jha. Appellant contends that the
Examiner contradicts the argument that a temperature gradient exists causing
the temperature to be lower as the distance from the heat source increases,
otherwise depositions would occur throughout the reactor which "does not
appear to be the case." Ans. 6. According to Appellant, modifying the
reactor to include a cooling jacket to reduce pyrolytic/thermally decomposed
depositions on the vessel walls would not be necessary because, according to
the Examiner's argument, there is no deposition on the walls of the reactor.
We agree with the Examiner's argument that the modification of
Komaki/Komaki2 to add the cooling jacket to "provide a safeguard" to
ensure no depositions occur on the walls of the vessel is a reasonable basis
even without the express teaching deposition of carbon on the walls of the
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Application 13/247,354
containment vessel actually occurring because Komaki2 expressly teaching
using heat as the excitation source for the diamond deposition. Ans. 30.
Accordingly, we sustain the rejection of claim 10 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Komaki in view of Komaki2,
Ichikawa, Comardo, and further in view of Komatsu and Jha.
III. CONCLUSION
On the record before us and for the reasons discussed above, we
sustain all the rejections maintained by the Examiner.
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 )(iv).
AFFIRMED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK W. DASSEL
Appeal2017-001920
Application 13/247,3547
Technology Center 1700
Before MARK NAGUMO, RAEL YNN P. GUEST, and
JEFFREY R. SNAY, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge, dissenting.
In my view, the preponderance of the evidence of record indicates
that, as Appellant argues (Br. 15-22), the Examiner misapprehends the
teachings of Komaki. As a result, the proposed modifications would render
the aims of Komaki unsatisfactory for the intended purposes of depositing
diamond on particles in the vibrating bed of the pan. I therefore dissent,
respectfully, from the affirmance of the appealed rejections.
In short, Komaki teaches that the bed of particles on which diamond
generation occurs is vibrated within a restricted region of space that is "[a]
diamond or ... DLC generation region ... limited to space .... distant from
the filament about several millimeters by a plasma excitation method at a
7 Appellant identifies the real party in interest as Rokstar Technologies
LLC. Appellant's Appeal Brief 2 (filed Feb. 29, 2016) (hereinafter "Br.").
Appeal2017-001920
Application 13/247,354
plasma periphery and a hot filament." (Komaki2, 2, 11. 9--11.) Komaki2
explains that, on the one hand, "[ e ]xcitation energy density or temperature is
too higher than the inside of plasma, or the above in the place still nearer to a
filament, and a precipitation phase is graphite-ized." (Id. at 11. 11-13.) "On
the other hand," Komaki2 continues, "if it becomes far from a DLC phase
and a pan, it will become an amorphous carbon phase in a place more distant
than a diamond generation region." (Id. at 11. 13-15.) In other words, under
the conditions in the apparatus described by Komaki2, a diamond coating on
a vibrated grain that gets too close to the filament will be turned into
graphite, and a diamond coating on a vibrated grain that spends too much
time too far from the filament becomes amorphous. 8
It is likely that one could vibrate the pan described by Komaki2 so
vigorously that grains are spilled over the sides of the pan. One might well
be inclined to collect such spilled grains by an overage chute and receptacle
such as that disclosed by Comardo (Comardo 12, i-f 79, and Figs. 20 and 21).
However, a skilled person following the teachings of Komaki2 would not
have vibrated the pan to that extent because Komaki2 teaches that doing so
would defeat the purpose of obtaining diamond-coated particles. As
Appellant argues, "the diamond generation region exists only in a space that
exists several millimeters away from the filament 3, i.e., at least 2 mm away
from the filament 3." (Br. 18, 11. 24--26 (citing Komaki2, 11. 10-11).)
"Thus," Appellant concludes, "the diamond generation region exists only
inside of the dished container 1." (Br. 18, 11. 24--25.)
8 The translation of Komarki2 (apparently a Google Translate product) is not
clear throughout. However, such deficiencies should be held against the
proponent of the document-here, the PTO.
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Appeal2017-001920
Application 13/247,354
The "intended use" epithet applied by the Examiner to Appellant's
arguments is inapposite because that "intended use" restricts the ways in
which a person skilled in the art would consider modifying the device. The
Examiner has not directed our attention to some teaching of some other
chemical vapor deposition reaction that might be conducted in the device
described by Komaki2 that is not subject to the limitations of the deposition
of diamond-like carbon films. But without some such teaching there would
have been no proper motivation to modify the apparatus of Komaki2.
None of the remaining findings of fact cure this deficiency. I would,
therefore, reverse the rejections of record. Thus, I dissent, with respect.
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