14204015 (P.T.A.B. Oct. 26, 2018)

Ex Parte Myers-Ward et al

Patent Trial and Appeal BoardOct 26, 2018

14204015 (P.T.A.B. Oct. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/204,015 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-US2 2072 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 Appeal2018-000430 Application 14/204,015 Technology Center 1700 Before ROMULO H. DELMENDO, N. WHITNEY WILSON, JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 13-21 and 23-25. We have jurisdiction under 35 U.S.C. Â§ 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 November 17, 2016 ("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. Appeal2018-000430 Application 14/204,015 The claims on appeal are directed to a method that includes etching the surface of an off-axis 4H-SiC substrate with hydrogen or an inert gas. Spec. ,r 5. Claims 13 and 18, reproduced below from the Claims Appendix, are illustrative of the claims on appeal. 13. A method comprising: providing an off-axis 4H-SiC substrate; and etching the surface of the substrate with an inert gas. 18. A method comprising: providing a 4Â° off-axis 4H-SiC substrate; etching the surface of the substrate with hydrogen; and growing a doped buffer layer directly on the substrate after the etching. Appeal Br. 9 (Appendix A). REJECTIONS The Examiner maintains the following rejections on appeal: Rejection 1: The provisional rejection of claim 13 under 35 U.S.C. Â§ 101 as claiming the same invention as that of claim 2 of co-pending Application No. 14/204,045 (Ans. 2-3); Rejection 2: The provisional rejection of claims 14--17 on the ground of non-statutory double patenting over claims 1, 2, 4, 7, 11, and 15 of co- pending Application No. 14/204,045 in view of Muto et al. (WO 2011/074453 Al, June 23, 2011), English translation via (US 2012/0280254Al, published November 8, 2012) ("Muto") (Ans. 4--5); 2 Appeal2018-000430 Application 14/204,015 Rejection 3: The provisional rejection of claims 18-21, 24, and 25 on the ground of non-statutory double patenting over claims 1, 2, 4, 8, and 10- 15 of co-pending Application No. 14/204,045 in view of Muto (Ans. 5-6); Rejection 4: The rejection of claims 13-15 under pre-AIA 35 U.S.C. Â§ I03(a) over Muto in view ofN. Camara and K. Zekentes, Study of the reactive ion etching of 6H-SiC and 4H-SiC in SF6/Ar plasmas by optical emission spectroscopy and laser interferometry, 46 Solid-State Electronics 1959-1963 (2002) ("Camara") (Ans. 7-8); Rejection 5: The rejection of claim 16 under 35 U.S.C. Â§ I03(a) over Muto, Camara, and Sriram et al (US 20I0/0308337Al, published December 9, 2010) ("Sriram") (Ans. 8); Rejection 6: The rejection of claims 17 under 35 U.S.C. Â§ I03(a) over Muto, Camara, Sriram, and Haney et al. (US 2010/0237356 Al, September 23, 2010) ("Haney") (Ans. 9); Rejection 7: The rejection of claims 18, 19, and 24 under 35 U.S.C. Â§ I03(a) over Muto and Sriram (Ans. 9-10); Rejection 8: The rejection of claim 21 under 35 U.S.C. Â§ I03(a) over Muto, Sriram, and Haney (Ans. 10-11); Rejection 9: The rejection of claim 20 under 35 U.S.C. Â§ I03(a) over Muto, Sriram, and of Singh et al. (US 2001/0011729 Al, published August 9, 2001) ("Singh") (Ans. 11); and Rejection 10: The rejection of claim 23 and 25 under 35 U.S.C. Â§ I03(a) over Muto, Sriram, Itoh et al. (WO 2011/158528 Al, published December 22, 2011), English translation via ltoh et al. (US 2012/0214309 Al, published August 23, 2012) ("Itoh") (Ans. 11-13). 3 Appeal2018-000430 Application 14/204,015 DISCUSSION Rejections 1-3 There is no indication that the Examiner has withdrawn any of the double patenting rejections. In fact, the Answer, which restates the rejections, establishes otherwise. Ans. 2---6. 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 4-6 The Examiner finds that Muto discloses claim 13 's method including etching the surface of the off-axis 4H-SiC substrate, but fails to disclose that such etching is with an inert gas. Final Act. 7. The Examiner finds that Camara discloses that the 4H-SiC layer can be etched using argon. Id. (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 is capable of removing undesired material from 4H-SiC substrate at a high etch rate." Id. at 7-8. Further, according to the Examiner, "equivalent and substitution of one for the other would produce an expected result." Id. at 8. Appellants argue that Muto and Camara fail to teach etching the surface of the 4H-SiC substrate with an inert gas, and the Examiner has not 4 Appeal2018-000430 Application 14/204,015 provided a rational for modifying the references to arrive at the claimed invention. Appeal Br. 3. Camara discloses etching SiC using SF 6/ Ar 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. 13-14. Both definitions state 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 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 (Ans. 14), 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 13-15. The rejections of claims 16 and 17 (Rejections 5 and 6) include the same deficiency as discussed above. Therefore, we also do not sustain the rejections of those claims. 5 Appeal2018-000430 Application 14/204,015 Rejection 7-10 The Examiner finds that Muto discloses claim 18' s method including etching the surface of the 4Â° off-axis 4H-SiC substrate with hydrogen, but fails to explicitly disclose growing a doped buffer layer on the substrate after etching. Final Act. 9. The Examiner interprets the term substrate as "a base layer of something or a layer that is underneath another layer." Ans. 18. Based on this interpretation, the Examiner finds that Sriram discloses growing a doped buffer layer (120, 540, or 640) on a SiC substrate (114, 514, or 614) after etching. Final Act. 9 (Sriram ,r 52, 63; Fig. 4F, Fig 5, Fig 6); Ans. 18. Further, the Examiner determines that it would have been obvious to one having ordinary skill in the art, at the time of invention, to modify Muto and Camara in view of Sriram "by growing a doped buffer layer [ directly on] the substrate because it helps to produce a diode of the hybrid device." Final Act. 9-10. Appellants argue that Sriram discloses growing a doped buffer layer indirectly, not directly on the substrate. See Appeal Br. 7; see also id. at 6 ("where there are a number of intervening layers between the buffer 120 layer and the substrate 11 O"). Appellants' argument is persuasive of reversible error. Sriram discloses that its semiconductor device includes substrate 110, which may be a semi-insulating silicon carbide (SiC) substrate, for example, the 4H polytype of silicon carbide. Sriram ,r 39. In contrast, Sriram discloses that layer 114 is a SiC layer (Sriram ,r 53), not a 4H-SiC substrate. Thus, even if we agree with the Examiner's interpretation that a substrate is a base layer of something or a layer that is underneath another layer, Sriram teaches growing doped buffer layer 120 (540 or 640) "directly on" (i.e., with no 6 Appeal2018-000430 Application 14/204,015 intervening layers) SiC substrate layer 114 (514 or 614), not "directly on" a 4H-SiC substrate (110). In other words, the plain language in claim 18 informs one skilled in the relevant art that "the substrate" ( claim 18, line 4) refers to "4Â° off-axis 4H-SiC substrate" (line 2), which is etched. Because Appellants have identified reversible error in the Examiner's finding that Sriram discloses growing a doped buffer layer "directly on" the substrate after etching, we do not sustain the rejection of claims 18, 19, and 24. The rejections of claims 20, 21, 23, and 25 (Rejections 8-10) include the same deficiency as discussed above. Thus, we also do not sustain the rejections of those claims. DECISION The provisional rejection of claim 13 under 35 U.S.C. 101 as claiming the same invention as that of claim 2 of co-pending Application No. 14/204,045 is affirmed. The provisional rejection of claims 14--17 on the ground of non- statutory double patenting over claims 1, 2, 4, 7, 11, and 15 of co-pending Application No. 14/204,045 in view of Muto is affirmed. The provisional rejection of claims 18-21, 24, and 25 on the ground of non-statutory double patenting over claims 1, 2, 4, 8, and 10-15 of co- pending Application No. 14/204,045 in view of Muto is affirmed. The rejection of claims 13-15 under pre-AIA 35 U.S.C. Â§ 103(a) over Muto in view of Camara is reversed. The rejection of claim 16 under 35 U.S.C. Â§ 103(a) over Muto, Camara, and Sriram is reversed. 7 Appeal2018-000430 Application 14/204,015 The rejection of claims 17 under 35 U.S.C. Â§ 103(a) over Muto, Camara, Sriram, and Haney is reversed. The rejection of claims 18, 19, and 24 under 35 U.S.C. Â§ 103(a) over Muto and Sriram is reversed. The rejection of claim 21 under 35 U.S.C. Â§ 103(a) over Muto, Sriram, and Haney is reversed. The rejection of claim 20 under 35 U.S.C. Â§ 103(a) over Muto, Sriram, and of Singh is reversed. The rejection of claim 23 and 25 under 35 U.S.C. Â§ 103(a) over Muto, Sriram, Itoh is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED-IN-PART 8