Ex Parte Myers-Ward et al

Patent Trial and Appeal Board

Oct 26, 2018

14204045 (P.T.A.B. Oct. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/204,045 03/11/2014
26384 7590 10/26/2018
NAVAL RESEARCH LABORATORY
AS SOCIA TE COUNSEL (PA TENTS)
CODE 1008.2
4555 OVERLOOK A VENUE, S.W.
WASHINGTON, DC 20375-5320
FIRST NAMED INVENTOR
Rachael L. Myers-Ward
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.
102411-US3 1098
EXAMINER
TRAN,BINHX
ART UNIT PAPER NUMBER
1713
MAIL DATE DELIVERY MODE
10/26/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RACHAEL L. MYERS-WARD,
DAVID KURT GASKILL, CHARLES R. EDDY, JR.,
ROBERT E. STAHLBUSH,
NADEEMMULLAH A. MAHADIK, and
VIRGINIA D. WHEELER
Appeal2018-000431
Application 14/204,045
Technology Center 1700
Before ROMULO H. DELMENDO, N. WHITNEY WILSON, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1--4, 7, 8, and 10-15. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm-in-part.
1 In this Decision, we refer to the Specification filed March 11, 2014
("Spec."), the Final Office Action dated March 24, 2017 ("Final Act."), the
Appeal Brief filed April 24, 2017 ("Appeal Br."), the Examiner's Answer
dated August 16, 2017 ("Ans."), and the Reply Brief filed October 13, 2017
("Reply Br.").
2 Appellants identify the real party in interest as The Government of the
United States of America, as represented by the Secretary of the Navy.
Appeal Br. 2.
Appeal2018-000431
Application 14/204,045
The claims on appeal are directed to a method that includes etching
the surface of an off-axis 4H-SiC substrate with dry gas, hydrogen, or an
inert gas. Spec. ,r 5. Claim 1, reproduced below from the Claims Appendix,
is illustrative of the claims on appeal.
1. A method comprising:
providing an off-axis silicon carbide substrate; and
etching the surface of the substrate with an inert gas.
Appeal Br. 9 (Appendix A).
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1: The provisional rejection of claim 2 under 35 U.S.C.
§ 101 as claiming the same invention as that of claim 13 of co-pending
Application No. 14/204,015 (Ans. 3--4);
Rejection 2: The provisional rejection of claims 1, 4, 7, 11, and 15 on
the ground of non-statutory double patenting over claims 13-17 of co-
pending Application No. 14/204,015 (Ans. 5---6);
Rejection 3: The provisional rejection of claim 3 on the ground of
non-statutory double patenting over claim 13 of co-pending Application
No. 14/204,015 in view ofN. Camara and K. Zekentes, Study of the reactive
ion etching of 6H-SiC and 4H-SiC in SF ~Ar plasmas by optical emission
spectroscopy and laser interferometry, 46 Solid-State Electronics 1959-
1963 (2002) ("Camara") (Ans. 6);
Rejection 4: The provisional rejection of claim 8 on the ground of
non-statutory double patenting over claims 13-17 and 24 of co-pending
2
Appeal2018-000431
Application 14/204,045
Application No. 14/204,015 in view of Das et al. (US 2013/0062628 Al,
published March 14, 2013) ("Das") (Ans. 7);
Rejection 5: The provisional rejection of claims 12-14 on the ground
of non-statutory double patenting over claims 13-17 and 24 of co-pending
Application No. 14/204,015 in view of Sudarshan et al. (US 2013/0143396
Al, published June 6, 2013) ("Sudarshan") (Ans. 7-8);
Rejection 6: The rejection of claims 1--4, 7, and 8 under 35 U.S.C.
§ I03(a) over Das in view of Camara (Ans. 8-10);
Rejection 7: The rejection of claims 1--4, 7, 8, and 10 under 35 U.S.C.
§ I03(a) over Muto et al. (US 2012/0280254 Al, published November 8,
2012) ("Muto") in view of Camara (Ans. 10-11);
Rejection 8: The rejection of claims 11-15 under 35 U.S.C. § I03(a)
over Das, Camara, and Sudarshan (Ans. 11-13).
DISCUSSION
Rejections 1-5
In the Appeal Brief, Appellants state that, "As the rejections are
provisional, [Appellants] intend to choose in which application(s) to file a
terminal disclaimer and/or cancel claims when one or both of the
applications is otherwise allowable." Appeal Br. 7.
Appellants have not identified reversible error in the double patenting
rejections. Therefore, we summarily affirm the provisional double patenting
rejections.
Rejections 6-8
The Examiner finds that Das discloses claim 1 's method including
etching the surface of the off-axis silicon carbide substrate, but fails to
3
Appeal2018-000431
Application 14/204,045
disclose that such etching is with an inert gas. Final Act. 7-8. The
Examiner finds that Camara discloses that a 4H-SiC layer (which is a silicon
carbide layer) can be etched using argon plasma. Id. at 8 (citing Camara,
Abstract, 1959-1963). The Examiner determines that it would have been
obvious to one of ordinary skill in the art, based on Camara, to modify Muto
and etch its 4H-SiC substrate with argon gas "because it capable of
removing undesired material from [a] 4H-SiC substrate at a high etch rate."
Id. Further, according to the Examiner, "equivalent and substitution of one
for the other would produce an expected result." Id.
Appellants argue that Das and Camara fail to teach etching the surface
of the 4H-SiC substrate with an inert gas, and the Examiner has not provided
a rational for modifying the references to arrive at the claimed invention.
Appeal Br. 3.
Camara discloses etching SiC using SFdAr plasmas. Camara 1959.
Although Camara refers to SF d Ar gas mixtures, when considered in its
entirety, one of ordinary skill in the art would reasonably understand that
Camara teaches generating a plasma from a SF d Ar gas mixture, and using
the plasma, not the gas mixture for etching. Camara 1959, 1960
(Experimental), 1962.
The Examiner provides two dictionary definitions of "plasma." Final
Act. 15. Both definitions states that a plasma is an "ionized gas." Id. As
Appellants argue "ionization transforms the gas into [a] different state of
matter that is not a gas." Appeal Br. 3--4; see also, What is Plasma?,
Coalition for Plasma Science, http://www.plasmacoalition.org/about-
plasma.htm ("Plasma Article") ("A plasma is a distinct state of matter[, the
other three being solid, liquid, and gas,] containing a significant number of
4
Appeal2018-000431
Application 14/204,045
electrically charged particles, a number sufficient to affect its electrical
properties and behavior."). After considering Appellants' argument and
evidence, we are persuaded that although plasma is derived from gas, it is
not itself a gas or a subset of a gas as the Examiner contends (Final Act. 15),
but rather is a distinct state of matter (Plasma Article).
Because Appellants have identified reversible error in the Examiner's
finding that Camara teaches etching the surface of a substrate with an inert
gas, we do not sustain the rejection of claims 1--4, 7, and 8.
Because Rejections 7 and 8 include the same deficiency as discussed
above, we likewise do not sustain those rejections.
DECISION
The provisional rejection of claim 2 under 35 U.S.C. 101 as claiming
the same invention as that of claim 13 of co-pending Application
No. 14/204,015 is affirmed.
The provisional rejection of claims 1, 4, 7, 11, and 15 on the ground
of non-statutory double patenting over claims 13-17 of co-pending
Application No. 14/204,015 is affirmed.
The provisional rejection of claim 3 on the ground of non-statutory
double patenting over claim 13 of co-pending Application No. 14/204,015 in
view of Camara is affirmed.
The provisional rejection of claim 8 on the ground of non-statutory
double patenting over claims 13-17 and 24 of co-pending Application No.
14/204,015 in view of Das is affirmed.
5
Appeal2018-000431
Application 14/204,045
The provisional rejection of claims 12-14 on the ground of non-
statutory double patenting over claims 13-17 and 24 of co-pending
Application No. 14/204,015 in view of Sudarshan is affirmed.
The rejection of claims 1--4, 7, and 8 under 35 U.S.C. § 103 over Das
in view of Camara is reversed.
The rejection of claims 1--4, 7, 8, and 10 under 35 U.S.C. § 103 over
Muto in view of Camara is reversed.
The rejection of claims 11-15 under 35 U.S.C. § 103 over Das,
Camara, and Sudarshan is reversed.
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-IN-PART
6