Ex Parte Orita et al

Patent Trial and Appeal Board

Feb 12, 2018

13059128 (P.T.A.B. Feb. 12, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/059,128 02/15/2011 Hiroyuki Orita 375722US99PCT 7151
22850 7590 02/14/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
HERNANDEZ-DIAZ, JOSE
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
02/14/2018 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
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROYUKI ORITA, AKIO YOSHIDA, MASAHISA KOGURA,
TAKAHIRO SHIRAHATA, and SYUJI TANAKA
Appeal 2017-004912
Application 13/059,1281
Technology Center 1700
Before LINDA M. GAUDETTE, CHRISTOPHER C. KENNEDY, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek our review of the
Examiner’s rejections adverse to the patentability of claims 1, 3, 6, 7, 10, 12,
14, 16, 17,21,23,25-27, 29, and 31 under 35 U.S.C. § 103(a).
We have jurisdiction under 35 U.S.C. § 6.
We affirm.
1 Appellants identify the real party in interest as Toshiba Mitsubishi-Electric
Industrial Systems Corporation. App. Br. 1.
Appeal 2017-004912
Application 13/059,128
SUBJECT MATTER
The subject matter on appeal relates to methods of forming a metal
oxide film on a substrate. Such metal oxide films may be used in devices
such as solar batteries and touch panels. Spec. 12.
Claim 1 is illustrative, and is copied below with the key limitation at
issue in this appeal italicized:
1. A method of forming a metal oxide film, the method
comprising:
(A) converting a solution comprising at least one of Ti, Zn,
In, and Sn into a mist by applying ultrasonic waves to said
solution, present in a solution container;
(B) heating a substrate to a temperature sufficient to form
a metal oxide film by heating a heating device in contact with
said substrate to a[sic.] the sufficient temperature, thereby
obtaining a heated substrate, said substrate present in a reaction
vessel; and
(C) supplying the mist from (A) through a path that
connects the solution container to the reaction vessel, thereby
applying the mist to a first main surface of the substrate from (B)
and supplying ozone to the reaction vessel, thereby applying the
ozone to a first main surface of the heated substrate from (B),
thereby forming at least one of a TiCC film, a ZnO film, an In203
film, a SnO film and a SnCf film on the first main surface of the
heated substrate,
wherein the supplying (C) of the mist and of the ozone is
carried out separately and at predetermined timings, and
wherein neither the solution nor the ozone is contacted
with ultraviolet rays during the method.
App. Br. 122 (emphasis added).
2 Because the Appeal Brief does not contain page numbers, our opinion
refers to the sequential order of pages.
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Application 13/059,128
REFERENCES
The Examiner relies on the following references as evidence of
unpatentability:
Gordon US 5,980,983 Nov. 9, 1999
Satoh US 6,235,112 B1 May 22, 2001
Nikolov US 2005/0180014 A1 Aug. 18,2005
REJECTIONS
The following claims are rejected under 35 U.S.C. § 103(a):
I. Claims 1, 3, 10, 16, 17, 25, 29, and 313 over Satoh and Nikolov;
and
II. Claims 6,1, 12, 14, 21, 23, 26, and 27 over Satoh, Nikolov, and
Gordon.
STATEMENT OF THE CASE
The Examiner finds that Satoh teaches the method of forming a metal
oxide film according to independent claim 1, except for the limitation
requiring that the mist generated in step (A) and the ozone are supplied to
the reaction vessel “separately and at predetermined timings.” Final Act. 2—
3. The Examiner finds that Nikolov teaches a method of forming metal
oxide films where vapors of a metal containing (e.g., titanium) precursor
solution are first introduced into a reaction chamber and adsorbed onto a
substrate, followed by the introduction of a reactant (e.g., ozone) into the
3 The rejection heading (Final Act. 2) erroneously omits claim 31, but the
body of the rejection (id. at 5) sets forth the grounds of rejection for this
claim. Thus, we treat the omission of claim 31 from the rejection heading as
a harmless typographical error.
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Application 13/059,128
chamber. Id. According to the Examiner, Nikolov teaches that the separate
dosing of metal-containing precursor and reagent “allows for the deposition
of highly uniform layers.” Id. Based on this disclosure, the Examiner
concludes that it would have been obvious to the skilled artisan to modify
the teachings of Satoh to supply the metal-containing mist and the ozone
into the reaction chamber separately in order to yield a highly uniform
deposition of layers on the substrate. Id. The Examiner makes similar
findings and conclusions with respect to claim 3, the only other independent
claim on appeal. Id. at 3^4.
OPINION
Rejection I
Appellants argue the claims subject to Rejection I as a group.4 App.
Br. 5—9. Therefore, we select claim 1 as representative, and decide the
appeal as to this ground of rejection on the basis of claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
Appellants contend that the Examiner’s proposed modification of
Satoh is improper because Satoh introduces the metal- or metalloid-
containing reactants into the reaction chamber as a liquid, while Nikolov
requires such reactants to be introduced in gaseous form. App. Br. 5—7.
Appellants contend further that Satoh requires the metal- or metalloid-
containing reactant and the oxidant to be “simultaneously present” in the
reaction chamber in order to form the metal oxide film, whereas Nikolov
4 Although the Appeal Brief Argument subheading refers to “Separately
argued claims 1 and 3,” no separate arguments appear to be made with
respect to claim 3.
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Application 13/059,128
requires the sequential introduction of the reactant and oxidant. Id. at 6.
Appellants characterize Satoh’s process as chemical vapor deposition
(CVD), andNikolov’s process as atomic layer deposition (ALD). Id. Based
on the alleged differences in these respective processes, Appellants contend
there would have been no reason to modify Satoh with Nikolov {id. at 7),
and that the Examiner’s proposed modification would render Satoh’s process
unsatisfactory for its intended purpose {id. at 7—8). Appellants contend
further that they have “demonstrated a particular benefit to the claimed
introduction of the reactants at separate and at predetermined timings.” Id.
at 8—9.
Appellants’ arguments fail to persuade us of reversible error in the
Examiner’s rejection of claim 1. We, therefore, sustain Rejection I.
Our analysis begins by noting several of Appellants’ arguments are
based on a misunderstanding of the teachings of Satoh. Contrary to
Appellants’ argument (App. Br. 5—7), Satoh does not require the metal-
containing reactant to reach the substrate in liquid form. Rather, Satoh
expressly teaches that “the mist is vaporized at the surface of the substrate or
prior to reaching the surface of the substrate,” Satoh 2:44-46 (emphasis
added). See also id. at 3:34—36, 5:40-43. We also observe that Satoh does
not even require the presence of ozone for the metal-containing reactant to
form a thin film on a substrate, much less its simultaneous presence in the
reaction chamber with the metal-containing reactant. Satoh 2:36-44
(explaining how a thin film is formed on the substrate after the mist of the
liquid reaction material (which includes e.g., “metal organic compounds,”
id. at 4:20-24) is advanced toward a surface of the substrate and is vaporized
either at, or prior to, the substrate surface). Rather, Satoh merely expresses a
preference for “supplying a reaction material gas [e.g., ozone {id. at 4:26—
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29)] being reactive with the liquid reaction material to form the thin film on
the surface of the substrate.” Id. at 2:47—50. Sato’s preference, as opposed
to a requirement, for using a reaction material gas is reflected in various
embodiments. Compare Satoh, Figs. 1, 2 (no source of reaction material
gas), with id., Figs. 3, 4 (source of ozone-containing oxygen gas 30 delivered
into the reaction chamber through intake port 29 via mass flow controller
11" and valves 16f', 16g', and 16e').
Based on the above disclosure, we cannot agree with Appellants that
the skilled artisan would not have been motivated to modify the teachings of
Satoh to separately introduce the liquid reaction material and reaction
material gas, should such gas even be used. Indeed, the Examiner has
provided a sound reason to do so, based on the teachings of Nikolov (Final
Act. 3), and the device of Satoh is capable of separately introducing these
constituents. Here, we emphasize Satoh’s express teaching that the “oxygen
gas introduced from the port 30 is also controlled at a given flow rate by the
mass flow controller 11" and is then introduced into the interior of the
reaction chamber V from the intake port 29 via the valves 16/", 16g’, and
16e'.” Satoh 6:11—15. Because Satoh’s reaction material gas is delivered
into the reaction chamber through a separate controller, intake port, and
valves than is the metal-containing liquid reaction material, the skilled
artisan would have recognized that these separate constituents could
separately be supplied into the reaction chamber. Based on the teachings
contained in Nikolov that such separate dosing of elements on a substrate
yields layers that are “highly uniform” (Nikolov 147), the skilled artisan
would have recognized that Satoh’s thin films could be improved using the
same technique. “[I]f a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it would improve
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similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.” KSR Int 7 Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007). Appellants have provided no evidence that the
Examiner’s proffered modification would be beyond the skill of the ordinary
artisan. Thus, we discern no error in the Examiner’s conclusion of
obviousness.
Turning to Appellants’ contention regarding certain benefits, we share
the Examiner’s view (Ans. 11—12) that the experimental data is not
commensurate in scope with the claimed subject matter. Specifically, it is
unclear whether the metal oxide film in the experimental sample is a “Ti02
film, a ZnO film, an E12O3 film, or a SnO film” as required by claim 1. Even
if the film was shown to be one of the four recited films, Appellants have not
shown how any properties of such film can reasonably be extended to the
other three that are encompassed by claim 1.
We also note that Appellants do not assert that the purported benefits
are unexpected. “[T]he burden of showing unenxpected results rests on he
who asserts them. Thus it is not enough to show that results are obtained
which differ from those obtained in the prior art: that difference must be
shown to be an unexpected difference.” In re Klosak, 455 F.2d 1077, 1080
(CCPA 1972).
Thus, we sustain Rejection I.
Rejection II
Appellants present arguments germane to the limitations recited in
claims 7 and 23, which each require the conversion of “two or more
different solutions into a mist,” and then supplying the mist “simultaneously
or separately.” App. Br. 10.
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Appellants’ arguments are unpersuasive for the reasons provided by
the Examiner in the Answer. Ans. 12—13. Furthermore, we emphasize that
Appellants do not address, and thus do not reveal error in, the Examiner’s
reliance on the well-established doctrine regarding a mere duplication of
steps as set forth in In re Harza, 274 F.2d 669 (CCPA 1960). Here, we
agree with the Examiner’s determination (Final Act. 6) that the recited
conversion of “two or more different solutions into a mist” constitutes a
duplication of a step performed in claim 1, and shifts the burden to
Appellants to demonstrate some new, unexpected result. In re Harza, 274
F.2d at 671. No such unexpected results have been provided. We also
observe that Appellants’ criticality argument (App. Br. 10) is misplaced
because paragraph 70 of the Specification discusses the separate supply of
the metal-containing mist (i.e., “solution 4” (Spec. 160)) and the ozone, not
the separate supply of multiple metal-containing mists to the substrate.
For these reasons, we sustain Rejection II.
DECISION/ORDER
The Examiner’s final decision to reject claims 1, 3, 6, 7, 10, 12, 14,
16, 17, 21, 23, 25—27, 29, and 31 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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