Ex Parte Dietrich et al

Patent Trial and Appeal Board

Aug 1, 2016

12320904 (P.T.A.B. Aug. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/320,904 0210612009
23117 7590 08/03/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Anton Dietrich
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.
JAR-3691-1633 7616
EXAMINER
WU,JENNYR
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
08/03/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTON DIETRICH,
YIWEI LU, and BRYCE CORSNER
Appeal 2015-001118
Application 12/320,904
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 11-17 and 21under35 U.S.C. § 103(a).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Real Party in Interest is stated to be Guardian Industries Corp. (App.
Br. 3).
Appeal 2015-001118
Application 12/320,904
Claim 11 is illustrative of the appealed subject matter (emphasis
added to highlight key limitations):
11. A method of making a coated article including sputter-
depositing a transparent conductive oxide layer on a
substrate, the method comprising:
providing a substrate to be coated;
providing a sputtering apparatus comprising:
a vacuum chamber,
first and second rotatable cylindrical tubes located
proximate one another in the vacuum chamber, the first and
second tubes respectively supporting first and second sputter
targets including target material,
a top gas inlet located proximate to the first and second
rotatable cylindrical tubes and remote from the substrate, on
a side of the tubes opposite the substrate, so that the tubes are
located between the top gas inlet and the substrate, and
wherein the substrate is horizontally oriented in the chamber;
providing an oxygen flow to the vacuum chamber through
the top gas inlet 1A.Jhen spittter-depositing the transparent
conductive oxide layer on the substrate, wherein at least
about 75% of the total oxygen gas introduced into the
chamber when sputter-depositing the transparent conductive
oxide layer is introduced into the chamber via the top gas
inlet, so that the tubes are located between the substrate and
the top gas inlet via which the at least about 75% of the total
oxygen gas is introduced into the chamber;
providing an inert gas flow via an inert gas source to the
vacuum chamber to increase pressure therein from a first
pressure to a second pressure, wherein the second pressure is
about 10-3 to 10-2 mbar and the first pressure is lower than the
second pressure,
wherein at least some of the inert gas being introduced
into the chamber via a bottom gas inlet, and wherein the top
and bottom gas inlets are on opposite sides of the tubes with
the top gas inlet being above the tubes and the bottom gas
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Application 12/320,904
inlet being below the tubes, so that at least about 75% of the
oxygen gas is introduced into the chamber from above the
substrate and at least some of the inert gas is introduced into
the chamber from below the substrate;
rotating the first and second tubes at less than about 5
RPM·
'
detecting the oxygen flow within the vacuum chamber
and/or an amount of power applied to the first and second
tubes;
adjusting the oxygen flow and/or amount of power to
compensate for detected oxygen partial pressure variations.
(App. Br. 20-21, Claims App.)
The Examiner maintains, and Appellants appeal, the following
rejections under 35 U.S.C. § 103(a):
(a) Claims 11, 12, 16, 1 7, and 21 as unpatentable over Belkind et al.
(WO 92/01081, published Jan. 23, 1992) (hereinafter "Belkind") in view of
Demaray et al. (WO 2004/106581 A2, published Dec. 9, 2004) (hereinafter
"Demaray");
(b) Claim 13 is rejected as unpatentable over Belkind in view of
Demaray, and further in view of Lao et al. (US 2009/0263596 Al, published
Oct. 22, 2009) (hereinafter "Lao"); and
( c) Claims 14 and 15 are rejected as unpatentable over Belkind in
view of Demaray, and further in view of Kanazawa et al. (US 6,217, 719 B 1,
published Apr. 17, 2001) (hereinafter "Kanazawa").
Appellants' arguments urging reversal of the rejections of claims 11-
1 7 and 21 focus mainly on limitations common to independent claim 11
(App. Br. 6-16, Reply Br. 2-7). In the absence of arguments specific to
their patentability, dependent claims 12-17 and 21 stand or fall with
claim 11. 37 C.F.R. § 41.37(c)(l)(iv).
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Application 12/320,904
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants' contentions, we find that the preponderance of evidence on this
record supports the Examiner's conclusion that independent claim 11 and all
of its dependent claims are unpatentable over the applied prior art.
Appellants have failed to show that the Examiner erred reversibly. We
sustain the Examiner's§ 103 rejections, as listed in (a) through (c) above, of
all the appealed claims for essentially the reasons set out by the Examiner in
the Final Office Action and the Answer.
We add the following primarily for emphasis.
Rejection (a)
The Examiner finds that Belkind's disclosure of sputter-depositing
Sn02 and ZnO films (Final Act. 3) discloses all the limitations of claim 1
except that "that it does not expressly teach [introducing into the vacuum
chamber] oxygen gas above tubes on the top and [introduction of] inert gas
below tubes on the bottom below [the] substrate, and detecting the oxygen
flow and adjusting the oxygen flow" (id. at 6). 2 The Examiner finds,
however, that Belkind teaches that "many variations in the gas supply
system shown are practical as well" (id. (citing Belkind 15: 16-17) ). The
Examiner further finds that Belkind's term "'variation"' suggests any
2 The Examiner determined that although Demaray is silent regarding the
step of detecting and adjusting, Demaray teaches controlling oxygen flow
rate, and, therefore, it would have been obvious to have included a step of
detecting the oxygen flow and adjusting it accordingly in order to ensure that
oxygen flow rate is controlled within a proper level (Final Act. at 9).
Appellants do not dispute this determination (Briefs, generally).
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Application 12/320,904
charactenstlc of a gas supply system including gas introduction at any
location or in any amount (Final Act. 6).
The Examiner finds that Belkind teaches conduits 267 and 269 are
provided within the vacuum chamber in order to introduce an inert gas such
as argon "and/or" a reactive gas such as oxygen into the chamber (id. at 6
(emphasis added)( citing Belkind Fig. 8; 23:11-18)). According to the
Examiner, the term "or" suggests that inert gas can be introduced into the
chamber bottom, below the cylindrical targets 205 and 207 (Final Act. 6).
The Examiner determines that if inert gas is introduced from the bottom as
suggested in Figures 8 and 15, then it would have been obvious to the
ordinary skilled artisan to introduce oxygen gas from the top in order to
supply oxygen near the target material for full target oxidation (id. at 8).
The Examiner further finds that although Belkind suggests
introducing inert gas near the bottom of the vacuum chamber above the
substrate, Belkind does not expressly teach that at least some inert gas is
introduced below the substrate (id.). The Examiner finds, however, that
Demaray suggests that at least some inert gas is introduced below the
substrate (id. at 9 ("inert gas is introduced below substrate 16") (citing
Demaray Fig. IA)). The Examiner determines that because introducing inert
gas above or below the substrate would provide the same expected result of
generating plasma, that it would have been obvious to the ordinary skilled
artisan to use either alternative method (Final Act. 9).
Appellants' main argument is that Belkind teaches away from the
present invention because "Belkind introduces the oxygen[, but not the
inert,] gas from below the substrate" (App. Br. 11 (citing Belkind Figs. 1,
15; 15:7-11; 14:22-27)). Appellants further argue that Belkind's Figures 8
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Application 12/320,904
and 14 show that all gas is introduced into the bottom of the vacuum
chamber below the tubes with no disclosure of oxygen inlets above the tubes
(App. Br. 11). Appellants contend that the Examiner's findings ignore
Belkind's teachings that although the inert gas can be introduced at a lower
position with the reactant gas, "it is generally preferred to introduce the
reactive gas near the substrate, and the inert gas near the target assemblies"
(Reply Br. 3--4 (citing Belkind Fig. 8; 23:13-21)).
Whether a reference teaches away from a claimed invention is a
question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). For a
reference to "teach away," it must criticize, discredit, or otherwise
discourage the claimed solution. See In re Fulton, 391F.3d1195, 1201
(Fed. Cir. 2004).
Here, Belkind discloses the benefits of using a sputtering apparatus
with a "high degree of adjustability" (Belkind 23 :22) and the ability to
introduce argon "and/ or" oxygen gas through select vacuum chamber
conduits (id. at 23: 13-18 (emphasis added)). In other words, Belkind
teaches that any conduit can introduce inert gas or oxygen gas (see Ans. 10-
11 ). Appellants' arguments are not persuasive because they fail to identify
any teaching in the applied prior art that criticizes, discredits, or discourages
introducing: (i) oxygen gas through top inlets 44 in Figure 1; and 341 and
343 in Figure 15 and (ii) inert gas through bottom inlets 50 in Figure 1; 267
and 269 in Figure 8; and 316 and 318 in Figure 15.
While Appellants urge that Belkind teaches that "it is generally
preferred to introduce the reactive gas near the substrate and the inert gas
near the target assemblies" (Reply Br. 3--4 (citing Belkind Fig. 8; 23: 13-
21) ), we view this preference as suggesting that introduction of reactive gas
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Application 12/320,904
near the target assemblies and inert gas near the substrate has been, and/or
may indeed be used in the prior art. See In re Boe, 355 F.2d 961, 965
( CCP A 1966) (court affirmed rejections based on art which rendered the
claimed invention obvious to those of ordinary skill in the art despite the fact
that the art teachings relied upon were phrased in terms of a non-preferred
embodiment). Belkind's statement, that introduction of reactive gas near the
target assemblies and inert gas near the substrate is not a preferred
embodiment, does not discourage, or teach away from, locating oxygen
inlets above the tubes. See Syntex (US.A.) LLC v. Apotex, Inc., 407 F.3d
1371, 1379--80 (Fed. Cir. 2005). Therefore, we are not persuaded by
Appellants' arguments that Belkind teaches away from claim 11.
Appellants assert that the Examiner's reason for modifying Belkind,
i.e., that supplying oxygen near the target material will result in full target
oxidation, is illogical and solves a problem not recognized in the applied
prior art (App. Br. 11; Reply Br. 2-3). Therefore, according to Appellants,
the Examiner's obviousness rejection is based on impermissible hindsight
reasoning (Reply Br. 2-3).
"A rejection based on section 103 clearly must rest on a factual basis,
and these facts must be interpreted without hindsight reconstruction of the
invention from the prior art." In re Warner, 379 F.2d 1011, 1017 (CCPA
1967)). Appellants' arguments are not persuasive because, as set forth
above, Belkind suggests that any given conduit can introduce either inert or
oxygen gas to the vacuum chamber. Therefore, no modification is necessary
when Belkind implies the introduction of reactive gas near the target
assemblies and inert gas introduction near the substrate.
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Appeal 2015-001118
Application I2/320,904
Appellants argue that the applied prior art does not fairly teach or
suggest that at least some of the inert gas is introduced into the chamber
from below the substrate as recited in the claim (App. Br. I I-I2). Demaray,
according to Appellants, also teaches away from claim I I because
Demaray' s Figure I A indicates that "all gas is introduced above the
substrate I6 and below the target (i.e., between the target and substrate)" (id.
at I2 (emphasis in original)). Appellants further argue that the Examiner
fails to provide any evidence showing that the plasma profile would be the
same if inert gas is supplied below the substrate (Reply Br. 8).
"[A] claimed invention may be anticipated or rendered obvious by a
drawing in a reference .... " In re Meng, 492 F.2d 843, 847 (CCPA I974).
Appellants' arguments are not persuasive because Demaray teaches that
"[p ]rocess gas can be inserted into the chamber of apparatus IO" (id. at i-f 3 I)
and Demaray's Figure IA depicts "reactor apparatus IO" with argon gas
introduced at the bottom of I 0. Thus, at least some of the inert gas is
introduced into the chamber from below the substrate, as recited in claim I I.
Contrary to Appellants' assertion, the Examiner is not required to provide
plasma profile evidence because "when a prima facie case is made, the
burden shifts to [Appellants] to come forward with evidence and/ or
argument supporting patentability." In re Glaug, 283, F.3d I335, I338 (Fed.
Cir. 2002) (citations omitted). Appellants have not met their burden in
providing evidence supporting patentability through any new and
unexpected results. Therefore, we discern no reversible error in the
Examiner's finding that "inert gas is introduced below substrate I6" as
shown in Figure IA (Final Act. 9).
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Application 12/320,904
Appellants argue that they do not understand the Examiner's finding
that "[i]f [Belkind's] oxygen is introduced from the top, at least about 75%
of the total oxygen gas is expected to be introduced from the top gas inlet
into the chamber" (App. Br. 16 (citing Final Act. 8)). In the alternative,
Appellants argue that the Examiner is misinterpreting the 7 5% feature as
recited in claim 11 (Reply Br. 8) and that the Examiner is erroneously
focused on the irrelevant concentration of oxygen in the gas (id. at 9).
We are not persuaded by Appellants' arguments because, as set forth
above, the Examiner found Belkind teaches that a conduit can introduce
either inert or oxygen gas to the vacuum chamber. Therefore, if oxygen
flow to the vacuum chamber is provided only through the top gas inlet
without any inert flow through this same or any other inlet, then "at least
about 75% of the total oxygen gas introduced into the chamber ... is
introduced ... via the top gas inlet" as recited in the claim.
On the record before us, the Examiner has shown that each and every
limitation of the claim is either described or suggested by the prior art or
would have been obvious based on the knowledge of the ordinary artisan.
See, e.g., In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988) (To establish a
prima facie case of obviousness, the Examiner must show that each and
every limitation of the claim is described or suggested by the prior art or
would have been obvious based on the knowledge of those of ordinary skill
in the art). Thus, we affirm the rejection of claims 11, 12, 16, 17, and 21.
Rejections (b) and (c)
Dependent claims 13-15 fall with claim 11. 3 7 C.F .R.
§ 41.37(c)(l)(iv). Thus, we affirm the rejection of claims 13-15.
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DECISION
The Examiner's§ 103 rejections are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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