Ex Parte Ito et al

Patent Trial and Appeal Board

Jun 9, 2016

13145348 (P.T.A.B. Jun. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/145,348 07/20/2011 Hirotaka Ito
22850 7590 06/13/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
383527US41PCT 4434
EXAMINER
BURKHART, ELIZABETH A
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
06/13/2016 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):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROTAKA ITO and KENJI YAMAMOT0 1
Appeal2014-004658
Application 13/145,348
Technology Center 1700
Before JAMES C. HOUSEL, CHRISTOPHER C. KENNEDY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1--4 and 6-11. An oral hearing was held on
June 7, 2016. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to a method for producing a
diamond-like carbon ("DLC") film. E.g., Spec. ,-i l; Claim 1. Claim 1 is
reproduced below from page 14 (Claims Appendix) of the Appeal Brief:
1 According to the Appellants, the Real Party in Interest is KABUSHIKI
KASISHA KOBE SEIKO SHO (KOBE STEEL, LTD.). App. Br. 2.
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Application 13/145,348
1. A method for producing a diamond-like carbon film, the method
comprising the step of forming a diamond-like carbon film on or
above a substrate by plasma chemical vapor deposition,
wherein the step of forming the diamond-like carbon film
includes:
applying a bipolar pulsed direct-current voltage to the substrate;
feeding a gas containing toluene into a chamber;
controlling a total gas pressure in the chamber at 4 Pa or more
and 7 Pa or less; and
controlling a negative bias voltage in the bipolar pulsed direct-
current voltage to have a magnitude of 400 V or more and 650 V
or less.
REJECTIONS ON APPEAL
1. Claims 1 and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dekempeneer et al. (EP 0 962 550 Al, published Dec. 8,
1999).
2. Claims 2 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dekempeneer in view of Saito et al. (US 2006/003 5083
Al, published Feb. 16, 2006) ("Saito '083").
3. Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Dekempeneer in view of Beck et al. (US 2005/0011748 Al, published
Jan. 20, 2005).
4. Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dekempeneer in view of Beck, further in view of Imoto et
al. (JP 2002-363747, published Dec. 18, 2002).
5. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dekempeneer in view of Akari et al. (US 2007 /0054125
A 1, published Mar. 8, 2007).
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6. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Dekempeneer in view of Saito et al. (US 2007 /0175587 Al, published
Aug. 2, 2007) ("Saito '587").
ANALYSIS
The Appellants present separate arguments only as to claims 1, 2, and
8. We limit our discussion to those claims. Claims 3, 4, 6, 7, 10, and 11
depend, directly or indirectly, from claim 1, and will therefore stand or fall
with claim 1. Claim 9 depends from claim 2 and will therefore stand or fall
with claim 2.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejections. Accordingly, we affirm the rejections for reasons set forth below
and in the Examiner's Answer. See generally Ans. 2-9.
Claim 1
The Examiner finds that Dekempeneer teaches a method for
producing a DLC film comprising each element of claim 1 except that
Dekempeneer discloses pressure and negative bias voltage magnitude ranges
that fully encompass, but are broader than, those disclosed by claim 1.
Ans. 2. Specifically, the Examiner finds, and the Appellants do not dispute,
that Dekempeneer teaches a pressure range of 1-1000 Pa and a negative bias
voltage magnitude range of 50-1500. Id. (citing Dekempeneer ,-i 11
(pressure), ,-i 17 (negative bias voltage magnitude)). The Examiner
concludes that claim 1 would have been prima facie obvious in view of the
overlapping ranges. Ans. 2-3.
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Relying on data in their Specification showing deposition rates in the
claimed pressure range of 4-7 Pa, Spec. iJ 21, the Appellants argue that the
claimed pressure range is "critical," and that the alleged showing of
criticality rebuts the prima facie case of obviousness set forth by the
Examiner. App. Br. 5-9. They also argue that "Dekempeneer fails to
identify the total gas pressure in the chamber as a result-effective variable
with respect to the growth rate, much less a high deposition rate in which the
plasma is stable," and that "it would not be routine experimentation to reach
the claimed method." Id. at 8.
We are not persuaded by the Appellants' arguments. As the Federal
Circuit explained in In re Geisler,
[ w ]hen an applicant seeks to overcome a prima facie case of
obviousness by showing improved performance in a range that is
within or overlaps with a range disclosed in the prior art, the
applicant must show that the claimed range is critical, generally
by showing that the claimed range achieves unexpected results
relative to the prior art range. Under that standard, it is not
inventive to discover the optimum or workable ranges by routine
experimentation. Only if the results of optimizing a variable are
unexpectedly good can a patent be obtained for the claimed
critical range.
116 F.3d 1465, 1469-70 (Fed. Cir. 1997) (internal quotation marks,
citations, and alterations omitted; emphases added); see also In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) ("The outcome of
optimizing a result-effective variable may still be patentable if the claimed
ranges are critical and produce a new and unexpected result which is
different in kind and not merely in degree from the results of the prior art."
(internal quotation marks omitted; emphasis added)); Iron Grip Barbell Co.
v. USA Sports, Inc., 392 F.3d 1317, 1322-23 (Fed. Cir. 2004) ("[E]ven
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though a modification results in great improvement and utility over the prior
art, it may still not be patentable if the modification was within the
capabilities of one skilled in the art, unless the claimed ranges produce a
new and unexpected result which is different in kind and not merely in
degree from the results of the prior art." (internal quotation marks and
alterations omitted)).
The Appellants argue only that the claimed range is "critical" because
it yields improved results. See App. Br. 5-9. They make no argument that
the results achieved using the claimed pressure range would have been
unexpected, or that the results are "different in kind and not merely in degree
from the results of the prior art." See Applied Materials, 692 F.3d at 1297.
The Appellants' Specification discloses what is logically described as
routine experimentation in which known result-effective variables are
optimized to achieve a desirable deposition rate. E.g., Spec. iii! 21, 3 6
(Table 1 ). The type of experimentation described by the Specification is
routine experimentation that is well within the ordinary level of skill in the
art. The Appellants have made no persuasive argument to the contrary.
Dekempeneer expressly teaches that "gas pressure during the
deposition" is a "critical parameter[]," Dekempeneer iJ 19, and it teaches that
pressure can be varied "between 1 and 1000 Pa and ... preferably between
10 and 50 Pa," Dekempeneer iJ 11, to achieve desired results. Dekempeneer
also teaches that "gas pressure influences ... ion energy," which relates to
"accelerat[ion] ... for the ions towards the substrate." Id. iii! 21, 22. In
particular, Dekempeneer teaches that higher pressure results in reduced ion
energy. Id. iJ 22. Moreover, Dekempeneer teaches that "pulse frequency" is
a critical parameter, and that "[a] higher frequency allows higher growth
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rates to be achieved at comparable process pressures .... " Id. iJ 20. That
teaching is similar to the disclosure in the Appellants' Specification
concerning frequency and growth rate. See Spec. iii! 4 7 (Table 3), 48
("[T]he deposition rate increases with an increasing pulse frequency .... ").
In view of those teachings, a person of ordinary skill in the art would
have understood that pressure is a "critical parameter" to achieving desired
deposition characteristics. And, despite the fact that Dekempeneer does not
explicitly correlate gas pressure with deposition rate, see App. Br. 8, a
person of ordinary skill in the art would have understood Dekempeneer
generally to be concerned with, inter alia, "achiev[ing]" "higher growth
rates" by optimization of the disclosed "critical parameters." Dekempeneer
iii! 19, 20.
The Appellants' discussion of Dekempeneer' s Example 1, which uses
methane at a pressure of 10 Pa, Dekempeneer iJ 26, is not persuasive. See
App. Br. 8-9. "[A] reference is not limited to the disclosure of specific
working examples." In re Mills, 470 F.2d 649, 651(CCPA1972). If
anything, Example l's disclosure of a pressure of 10 Pa would have
suggested to a person of ordinary skill in the art that lower pressures within
the disclosed range of 1 to 1000 Pa may be desirable. That Dekempeneer
does not explicitly discuss optimization of gas pressure specifically to
achieve higher growth rates, see App. Br. 8, does not negate the foregoing
analysis or otherwise persuasively show that the claimed pressure range
would not have been obvious in view of Dekempeneer' s disclosures. Cf In
re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) ("[T]he law does not
require that the references be combined for the reasons contemplated by the
inventor."). The Appellants have not persuasively argued that it would have
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been beyond the level of ordinary skill in the art to optimize the critical
parameters identified by Dekempeneer to achieve a pressure in the range of
4-7 Pa.
In the absence of a showing of unexpected results, we are not
persuaded that the claimed pressure range, which is fully encompassed by a
range disclosed in the prior art, imparts patentable distinction to claim 1.
See Geisler, 116 F.3d at 1469-70. Accordingly, we affirm the Examiner's
rejection of claim 1.
Claim 2
Claim 2 depends from claim 1 and further recites "wherein the gas to
be fed into the chamber is a gaseous mixture of toluene and argon, and the
gaseous mixture has a volume fraction of toluene of 40% or more."
The Examiner finds that Dekempeneer "discloses a gaseous mixture
of toluene and argon ... but does not disclose that the gaseous mixture has a
volume fraction of toluene of 40% or more and 60% or less." Ans. 3. The
Examiner finds that Saito '083 "discloses forming a DLC film on a substrate
by PECVD ... wherein a gaseous mixture of toluene and argon may be used
.... The amount of toluene used in the mixture may be 2-80 vol% .... "
Id. The Examiner concludes that "[i]t would have been obvious ... to
include argon in the amount suggested by [Saito '083] with the toluene of
Dekempeneer since it was a suitable amount to provide as a dilution gas for
forming DLC by PECVD." Id. at 3--4.
The Appellants argue that the claimed toluene volume fraction of 40%
or more is "critical" to ensure a high deposition rate. App. Br. 10.
We are not persuaded by the Appellants' criticality argument for the
reasons discussed above. The Appellants do not argue that the claimed
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toluene volume fraction yields unexpected results, or that the
experimentation and optimization leading to the selection of such a volume
fraction would have been beyond the ordinary level of skill in the art. The
volume fraction disclosed by Saito '083 substantially overlaps the claimed
fraction (and fully encompasses the fraction of claim 9, which depends from
claim 2). On this record, we are not persuaded that it would have been
beyond the ordinary level of skill in the art to optimize the fraction,
including to the volume fraction recited by claim 2, to obtain desirable
deposition characteristics.
Claim 8
Claim 8 depends from claim 1 and further recites "wherein the
diamond-like carbon film is formed at a deposition rate of more than 10
micrometers per hour (µm/h)."
The Examiner finds that Dekempeneer does not disclose the claimed
deposition rate, but that Saito '587 "discloses forming DLC film using
pulsed plasma wherein deposition rate may be improved and increased by
adjusting the duty ratio .... " Ans. 6. Saito '587 teaches that duty ratio
relates to pulse frequency and voltage. E.g., Saito '587 iii! 70-76. The
Examiner concludes that "[i]t would have been obvious to one of ordinary
skill in the art ... to adjust the duty ratio as suggested by [Saito '587] in the
process of Dekempeneer in order to increase and improve the deposition rate
of the DLC film, including values within the claimed range." Ans. 6. In
response to the Appellants' arguments, the Examiner further finds that "the
deposition rate is an inherent result of using toluene." Id. at 8-9.
The Appellants argue that "none of [Saito '587's] experiments
produced a film forming rate which is more than 10 µm/h. . . . Thus,
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Saito '587 fails to disclose or suggest that the diamond-like carbon film is
formed at a deposition rate of more than 10 µm/h." App. Br. 12. They
further argue that "Dekempeneer and Saito '587 fail to recognize the
criticality of the required range of the total gas pressure in the chamber for
achieving a high deposition rate of more than 10 µm/h in which the plasma
is stable." Id.
While we agree with the Appellants that "a deposition rate of more
than 10 micrometers per hour is not an inherent result of using toluene,"
Reply Br. 6, we are not persuaded of reversible error in the Examiner's
rejection. In particular, as set forth above, Dekempeneer renders obvious the
method of claim 1, from which claim 8 depends. Dekempeneer teaches not
only the use of toluene, but also the use of pressures and negative bias
voltage amplitudes that encompass those of claim 1. Dekempeneer ,-i,-i 19-22.
Dekempeneer also teaches the use of higher pulse frequencies to achieve
higher growth rates. Id. ,-i 20. That teaching is consistent with Saito '587's
teachings concerning duty ratio and growth rate. Saito '587,-i,-i 70-76.
While growth rates of more than 10 µm/h do not appear to be an
inherent result of using toluene in and of itself, Dekempeneer appears to
teach or otherwise render obvious deposition conditions (including the use
of toluene) that would inherently produce the claimed growth rate. An
obvious method does not become nonobvious merely by claiming an
inherent result of practicing the method. Cf Bristol-Myers Squibb Co. v.
Ben Venue Labs., Inc., 246 F.3d 1368, 1376 (Fed. Cir. 2001) ("Newly
discovered results of known processes directed to the same purpose are not
patentable because such results are inherent."); cf also Santarus, Inc. v. Par
Pharm., Inc., 694 F.3d 1344, 1354 (Fed. Cir. 2012) (obvious pharmaceutical
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formulation does not "become patentable merely by testing and claiming an
inherent property" of the formulation).
On this record, we are not persuaded of reversible error in the
Examiner's rejection of claim 8.
CONCLUSION
We AFFIRM the Examiner's rejection of claims 1--4 and 6-11.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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