11055973 (B.P.A.I. Sep. 30, 2010)

Ex Parte Meguro et al

Board of Patent Appeals and InterferencesSep 30, 2010

11055973 (B.P.A.I. Sep. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte KIICHI MEGURO, YOSHIYUKI YAMAMOTO, and TAKAHIRO IMAI ____________ Appeal 2010-002419 Application 11/055,973 Technology Center 1700 ____________ Before EDWARD C. KIMLIN, CHUNG K. PAK, and CATHERINE Q. TIMM, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL1 This is an appeal from the final rejection of claims 1-8. Claim 1 is illustrative: 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-002419 Application 11/055,973 2 1. A diamond single crystal substrate obtained by a vapor-phase growth method, wherein a diamond intrinsic Raman shift of the diamond single crystal substrate surface measured by microscopic Raman spectroscopy with a focused beam spot diameter of excitation light of 2 µm is deviated by +0.5 cm-1 or more to +3.0 cm-l or less from the standard Raman shift quantity of strain-free diamond, in a region (region A) which is more than 0% to not more than 25%, in area, of the surface, and is deviated by -1.0 cm-1 or more to less than +0.5 cm-1 from the standard Raman shift quantity of strain-free diamond, in a region (region B) of the surface other than the region A. The Examiner relies upon the following reference in the rejection of the appealed claims: Vichr 5,753,038 May 19, 1998 Appellants’ claimed invention is directed to a diamond single crystal substrate obtained by a vapor-phase growth method wherein the single crystal substrate has the recited intrinsic Raman shift. Appealed claims 1-8 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Vichr. We have thoroughly reviewed the respective positions advanced by Appellants and the Examiner. In so doing, we agree with Appellants that the Examiner has not established that Vichr describes the claimed subject matter within the meaning of § 102. Accordingly, we will not sustain the Examiner’s rejection. There is no dispute that Vichr, like Appellants, discloses a single crystal diamond obtained by a vapor-phase growth method. There was also no dispute that Vichr does not disclose the claimed intrinsic Raman shift. It Appeal 2010-002419 Application 11/055,973 3 is the Examiner’s position, however, that “[s]ince the diamonds are grown by the same methods including reactive ion etching of the substrate, the properties of the grown diamond would inherently be the same” (Ans. 3, second para.). It is well settled that when a claimed product or process reasonably appears to be substantially the same as a product or process disclosed by the prior art, the burden is on the Applicant to prove that the prior art product or process does not necessarily or inherently possess characteristics attributed to the claimed product or process. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). The initial burden, however, is upon the Examiner to demonstrate that the claimed product or process reasonably appears to be substantially the same as the product or process taught by the prior art. In the case of a claimed product, the Examiner may show that the methods of making the claimed and prior art products are substantially the same and, therefore, the products should be substantially the same as well. In the present case, the Examiner finds that both Appellants and Vichr employ the same methods for growing the diamond including the reactive ion etching of the substrate. The flaw in the Examiner’s reasoning, however, as urged by Appellants, is that the methods employed by Appellants and Vichr for growing the diamond are not the same, particularly with respect to the etching of the substrate before growth. Specifically, as stated by Appellants, “[t]he Vichr patent requires selective etching of the surface of a diamond single crystal seed substrate through a pattered [sic, patterned] surface mask to create nucleation protrusions on the seed substrate prior to growing Appeal 2010-002419 Application 11/055,973 4 diamond on the seed substrate” (Reply Br. of 6\4\08, p. 3, first para.). Appellants, on the other hand, disclose uniform etching of the seed substrate before single crystal growth. Consequently, although both Appellants and Vichr subject the seed substrate to a reactive ion etching before single crystal growth, the etching methods are sufficiently dissimilar to negate any notion that the product diamond substrate of Vichr’s method necessarily has the same intrinsic Raman shift presently claimed. Stated otherwise, the Examiner has not established that Appellants’ method of making a diamond single crystal substrate is substantially the same as the method used by Vichr such that it can be reasonably concluded that the claimed intrinsic Raman shift is necessarily or inherently a property of Vichr’s diamond product. In conclusion, based on the foregoing, we are constrained to reverse the Examiner’s rejection. REVERSED kmm MCDERMOTT WILL & EMERY LLP 600 13TH STREET, N.W. WASHINGTON, DC 20005-3096