Ex parte Hunt

Board of Patent Appeals and Interferences

Jul 15, 1998

07854124 (B.P.A.I. Jul. 15, 1998)

Application for patent filed March 19, 1992.1
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(2) is not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BRIAN D. HUNT
__________
Appeal No. 94-0105
Application 07/854,1241
__________
ON BRIEF
__________
Before KIMLIN, GARRIS, and PAK, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 94-0105
Application 07/854,124
2
This decision on appeal involves claims 1 through 9,
which are all the claims remaining in the application.
The subject matter on appeal relates to a process for
making a high temperature superconductor (HTSC) Josephson
element from
YBaCuO (also referred to in the art as “YBCO”) materials.
Claim 1 adequately illustrates the claimed subject matter for
the purposes of this decision:
1. A method of producing a high temperature
superconductor Josephson element comprising the steps of:
providing a substrate;
depositing a lower superconducting electrode film layer
of YBaCuO on the substrate;
depositing a weak link barrier layer of a
nonsuperconducting film of N-YBaCuO on the lower film layer,
and
depositing an upper superconducting counter-electrode
film layer of YBaCuO on the barrier layer.
The references relied upon by the examiner as evidence of
obviousness are:
G. Koren et al. (Koren), “Highly Oriented as-Deposited
Superconducting Laser Ablated Thin Films of Y Ba Cu O on1 2 3 7-*
SrTiO , Zirconia, and Si Substrates,” 53 Appl. Phys. Lett. No.3
23, 2330-2332 (1988)
Appeal No. 94-0105
Application 07/854,124
This appeal reaches the Board pursuant: a Brief (Paper 2
No. 12); an Examiner’s Answer (Paper No. 13); an amendment
(Paper No. 14) and Reply Brief (Paper No. 15); a Supplemental
Answer (Paper No. 16); a remand by the Board (Paper No. 17); a
“Revised Examiner’s Answer” (Paper No. 18); a Reply Brief,
incorporating the previous briefs by reference, and including
an amended claim (Paper No. 19); a “Second Examiner’s Answer,”
(amended claim denied entry: Paper No. 20); a Reply Brief
(Paper No. 21); and a “Supplemental Examiner’s Answer” (Paper
No. 22). The rejections on appeal are set out in Paper No. 18
at pages 3 through 6.
3
C.T. Rogers et al. (Rogers), “Fabrication of
Heteroepitaxial YBa Cu O -PrBa Cu O -YBa Cu O Josephson Device2 3 7-x 2 3 7-x 2 3 7-x
Grown by Laser Deposition,” 55 Appl. Phys. Lett., no. 15,
2031-2034 (1989)
J. Gao et al. (Gao), “Controlled Preparation of all High-
T SNS-Type Edge Junctions and DC SQUIDs,” 171 Physica C, 126-c
130 (1990)
The claims on appeal stand rejected under 35 U.S.C. § 103
as follows :2
Claims 1, 2, 4 and 5 are rejected over Gao;
Claims 3, 6 and 7 are rejected over the combined
disclosures of Gao and Rogers;
Claims 8 and 9 are rejected over the combined disclosures
of Gao, Rogers, and Koren.
Appellant has presented separate arguments for the
patentability of claims 1, 3, 4, 6, 8 and 9. Brief, Paper No.
Appeal No. 94-0105
Application 07/854,124
4
12, pages 5 and 12-16. However, because the examiner has not
carried his burden of establishing a case of prima facie
obviousness of the subject matter of independent claim 1, and
the supplemental references do not cure the deficiencies of
the primary reference, we cannot sustain any rejections of
record.
We base our decision on the examiner’s position regarding the
rejection of claim 1 as expressed in his answers, Paper No.
18, and Paper No. 20, item 5 (pages 2 to 3); we need not
discuss the other rejections before us on this appeal.
Appellant’s position vis-à-vis the rejection of claim 1 is set
out fully in Paper No. 12, pages 12-14.
Opinion
As evidence of obviousness of the subject matter of claim
1, the examiner relies on Gao, which he characterizes as
disclosing each step of the recited process but for the use of
Appeal No. 94-0105
Application 07/854,124
Appellant appears to agree with this characterization,3
with the further objection that Gao does not disclose the
deposition of the upper superconducting YBaCuO layer on a N-
YBaCuO barrier layer. Brief, Paper No. 12 at page 9.
“PBCO” stands for PrBaCuO, wherein Pr, praseodymium,4
has been substituted for Y, yttrium.
SNS is an acronym for “superconducting-normal metal-5
superconducting” sandwich structures, which are one form of
Josephson junction. Specification at page 2, lines 17-22.
5
N-YBaCuO as the weak link barrier layer. To remedy this3
defect, the examiner argues:
However, Gao et al disclose (see page 127, col.
1, lines 1-4) that PBCO has similar lattice4
constants as YBCO (Note: Both PBCO and N-YBCO have a
perovskite crystal structure).
Furthermore, both Y and Pr are rare earth
elements. Therefore, the normal conduction PBCO of
Gao et al is similar to the claimed N-YBCO not only
in lattice constants but also in chemical and
electrical properties (i.e. both are non-
superconducting or normal conducting).
It would have been obvious to one of ordinary
skill in the art at the time the invention was made
to have substituted the PBCO by N-YBCO as a weak
line [sic: link] barrier layer in Gao et al’s SNS5
edge Josephson junction because the substitution of
art recognized equivalents would lead to the
expected success.
Revised Examiner’s Answer, Paper No. 18, at pages 3 to 4
(underscored emphasis original, italicized emphasis added).
Appeal No. 94-0105
Application 07/854,124
6
Appellant traverses this rejection on several grounds,
Paper No. 12 at pages 12 through 14, urging, inter alia, that
there is no motivation in Gao to substitute N-YBCO for PBCO;
and that the prior art did not regard PBCO and N-YBCO as
equivalents.
To establish a prima facie case of obviousness, the
examiner must demonstrate that one of ordinary skill in the
art would have found both a suggestion to perform the here
claimed method, and a reasonable expectation of successfully
doing so, in the prior art. In re Vaeck, 947 F.2d 488, 493,
20 USPQ2d 1438, 1442 (Fed. Cir. 1991). Moreover, the examiner
bears the initial burden of supplying the factual basis for
his position. In re Warner,
379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968). Although the examiner may take
official notice of technical facts outside of the record to
fill the gaps that might exist in the evidentiary showing to
satisfy his burden, such asserted technical facts must be
“capable of such instant and unquestionable demonstration as
to defy dispute.”
Appeal No. 94-0105
Application 07/854,124
7
In re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418, 420 (CCPA
1970). However,
[a]ssertions of technical facts in areas of esoteric
technology must always be supported by citation to
some reference work recognized as standard in the
pertinent art and the appellant given, in the Patent
Office, the opportunity to challenge the correctness
of the assertion . . . [a]llegations concerning
'knowledge' of the prior art, which might be
peculiar to a particular art, should also be
supported and the appellant similarly given the
opportunity to make a challenge.
Ahlert, 424 F.2d at 1091, 165 USPQ at 420-1.
Appellant contends, and the examiner does not dispute,
that no reference relied on in the rejections on appeal
discloses N!YBCO, let alone its use as a weak link barrier
layer in a
Josephson junction. The examiner’s “official notice,”
although not denominated as such, is improper because it
concerns facts in an esoteric technology, and because it
concerns knowledge peculiar to that technology. Furthermore,
the alleged equivalence of N-YBCO and PBCO has been challenged
by appellant. Paper No. 12, paragraph bridging pages 13 and
14. In particular, appellant urges that PBCO was recognized
Appeal No. 94-0105
Application 07/854,124
8
as a nonsuperconductor, whereas YBCO was recognized as a
“chameleon,” which could change back and forth between
superconducting and nonsuperconducting states. Paper No. 12,
page 14, lines 2-7. The examiner has failed to come forward
with evidence from the scientific and technical literature in
support of his position that PBCO and N-YBCO were recognized
as equivalents in the art: his position is merely speculation
as to what the art might have recognized. The
examiner’s argument in Paper No. 20, item 5, pages 2 to 3,
that superconductor YBCO was known at the time of appellant’s
invention to differ from N-YBCO “only in oxygen content” is
similarly without support on the present record. Indeed, our
review of the application file reveals only cautious
speculation
as to the composition and structure of N-YBCO in appellant’s
specification (page 9, line 16 through page 10, line 7). We
observe further that Agostinelli, of record and discussed in
more detail post, discloses at page 11,396, left column, a
nonsuperconducting YBCO material that differs in oxygen
Appeal No. 94-0105
Application 07/854,124
9
content and crystal structure from the superconducting YBCO,
in direct contradiction to the examiner’s position.
Accordingly, we find that the rejections of record lack a
factual basis for the legal conclusion that the substitution
of N-YBCO for PBCO would have been obvious to one of ordinary
skill in the art, based on the disclosure of Gao. Absent some
motivation, there can be no expectation of successfully
modifying a reference. We conclude the examiner has not
established a prima facie case of obviousness, and we reverse
the rejection of claims 1, 2, 4 and 5 over Gao.
Since the remaining references do not cure the
deficiencies of Gao, we are constrained to reverse the
remaining rejections of record.
REMAND
We remand this application to the examiner to
specifically consider the patentability of the appealed claims
over the following prior art:
Appeal No. 94-0105
Application 07/854,124
Cited on form PTO-892, copy attached to this decision. 6
Actual publication date: Aug. 14, 1991.
Actual publication date: May 13, 1991.7
10
B.D. Hunt et al. (Hunt) “All high T edge-geometry weakc
links utilizing Y-Ba-Cu-O barrier layers,” Appl. Phys. Lett.,
no. 8, 982-4 (Aug. 1991)6
J.A. Agostinelli et al. (Agostinelli) “Cubic phase in the
Y-Ba-Cu-O system,” 43 Phys. Rev. B, no. 13, 11,396-99 (May 1,
1991)7
Both references are available under 35 U.S.C. § 102(a). Hunt
is, by virtue of the other authors, the work of “another” on
the present record, and appears to anticipate claims 1 through
9. Agostinelli, which is of record (see form PTO-1449, filed
Apr. 21, 1992 in Paper No. 3), discloses a cubic,
nonsuperconducting phase of YBCO. Page 11,396, left column.
Agostinelli further
discloses Josephson type sandwich structures of orthorhombic
(superconducting) and cubic (nonsuperconducting) YBCO.
Page 11,399, left column, last paragraph. At least
independent claim 1 appears to be anticipated by Agostinelli.
Rejections of certain dependent claims over various
Appeal No. 94-0105
Application 07/854,124
11
combinations of references may also be appropriate. In view
of the many unresolved issues in this application, and the
likelihood that some issues may be resolved by declarations
under 37 CFR §§ 1.131 or 1.132, we decline to exercise our
authority under 37 CFR § 1.196(b) to set forth new grounds of
rejection.
Finally, while appellant, in rebuttal, must offer
probative evidence in support of his arguments, In re Pearson,
494 F.2d 1399, 181 USPQ 641, 646, even if submitted in a
declaration, In re Grunwell, 609 F.2d 486, 491, 203 USPQ 1055,
1059 (CCPA 1979), citing In re Payne, 606 F.2d 303, 315, 203
USPQ 245, 246 (CCPA 1979) (mere argument in a declaration is
insufficient as evidence), we emphasize that the examiner’s
patentability determination must take into account any
argument or evidence of nonobviousness the appellant may
proffer concerning the above discussed issues.
SUMMARY
Appeal No. 94-0105
Application 07/854,124
12
For the above stated reasons, we reverse the examiner’s
decision rejecting the appealed claims over Gao, alone and in
combination with Rogers and Koren, and we remand this
application to the examiner for a determination of the
patentability over each of Hunt and Agostinelli, alone or in
combination with other references as the examiner deems
appropriate.
REVERSED AND REMANDED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS
AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHUNG K. PAK )
Administrative Patent Judge )
National Aeronautics &
Space Administration
NASA Resident Office
Appeal No. 94-0105
Application 07/854,124
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