Ex Parte Park et al

Board of Patent Appeals and Interferences

Nov 22, 2010

11313451 (B.P.A.I. Nov. 22, 2010)

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.
11/313,451 12/20/2005 Dong-Sil Park 162419-1 4424
42248 7590 11/22/2010
MOMENTIVE PERFORMANCE MATERIALS INC.-Quartz
c/o DILWORTH & BARRESE, LLP
1000 Woodbury Road
Suite 405
Woodbury, NY 11797
EXAMINER
GROUP, KARL E
ART UNIT PAPER NUMBER
1731
MAIL DATE DELIVERY MODE
11/22/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte DONG-SIL PARK, MARK PHILIP D’EVELYN,
MYLES STANDISH PETERSON II, JOHN THOMAS
LEMAN, and FRED SHARIFI
________________

Appeal 2009-015074
Application 11/313,451
Technology Center 1700
________________

BRADLEY R. GARRIS, JEFFREY T. SMITH, and
MARK NAGUMO, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL1

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 2009-015074
Application 11/313,451

2
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-23 and 36-42.2 We have jurisdiction under 35
U.S.C. § 6.

We AFFIRM.

Appellants claim a composition comprising a polycrystalline metal
nitride having a plurality of grains with a columnar structure having certain
properties such as a particular impurity content, porosity, or apparent density
(claim 1) or a particular inter-grain bend strength (claim 36).

Representative claims 1 and 36 read as follows:
1. A composition, comprising:
a polycrystalline group III metal nitride having a plurality
of grains, and the grains having a columnar structure; and, one
or more of
the metal nitride having an impurity content of less than
about 200 parts per million;
the metal nitride having a porosity in volume fraction in a
range of from about 0.1 percent to about 30 percent; or

2 Appellants incorrectly state that claim 43 is under rejection and on appeal
(Br. 4). In fact, as correctly stated by the Examiner, claim 43 stands
withdrawn from consideration as being directed to a non-elected species
(Ans. 2). The Examiner’s statement is supported by the record (Final Office
Action 3). Appellants do not agree with the Examiner that claim 43 stands
withdrawn from consideration (Br. 9). However, the proper forum for
resolving this disagreement is by way of petition, not appeal.
Appeal 2009-015074
Application 11/313,451

3
the metal nitride having an apparent density in a range of
from about 70 percent to about 99.8 percent of the theoretical
density value corresponding to the metal nitride.
36. A composition, comprising:
a polycrystalline metal nitride having a plurality of
grains, and the grains having a columnar structure;
the grains having an average grain size in a range of from
about 10 nanometers to about 1 millimeter; and
wherein the polycrystalline metal nitride has an inter-
grain bend strength greater than about 20 MegaPascal.

The Examiner rejects claims 36-41 under 35 U.S.C. § 102(b) as being
anticipated by, or in the alternative under 35 U.S.C. § 103(a) as being
obvious over, JP 748 (JP 2000247748 A, published September 2000; as
translated via the translation dated August 2008).

The Examiner also rejects all appealed claims under 35 U.S.C.
§ 102(a) or (e) as being anticipated by, over alternatively under 35 U.S.C.
§ 103(a) as being obvious over, Sakurai (US 2007/0138499 A1, published
June 2007).

As a preliminary matter, we observe that Appellants do not separately
argue with any reasonable specificity the rejections of the dependent claims
on appeal (e.g., no dependent claims are specifically identified by Appellants
in the presentation of their arguments). Accordingly, these claims will stand
or fall with their parent independent claims. We further observe that
Appeal 2009-015074
Application 11/313,451

4
Appellants’ arguments apply to some but not all of the independent claims
as explained more fully below.

We will sustain each of these rejections for the reasons expressed in
the Answer and below.

Concerning the rejections based on JP 748, Appellants argue that the
Examiner incorrectly found the polycrystalline metal nitride compositions of
JP 748 inherently possess the inter-grain bend strength required by claim 36
and that the Examiner incorrectly shifted to Appellants the burden of
showing the contrary (Br. 14).3

This argument is unpersuasive.

The compositions defined by the rejected claims and disclosed by
JP 748 contain many undisputed commonalities. On this record, there is no
dispute that both compositions comprise a polycrystalline metal nitride
having a plurality of grains with columnar structure. Moreover, Appellants
do not contest the Examiner’s findings that the JP 748 compositions satisfy

3 We acknowledge Appellants’ request that the rejections based on JP 748 be
withdrawn based on an alleged failure by the Examiner to provide an
acceptable translation of this reference (Br. 13-14). In fact, the Examiner
states and the record reflects that a certified translation of JP 748 was
supplied to Appellants on 26 August 2008 (Answer 4) which is prior to the
7 November 2008 filing date of Appellants’ Brief. In any event, the proper
forum for Appellants’ request is petition, not appeal. See Manual of Patent
Examining Procedure (MPEP) § 1002.02(c) (Rev. 2, May 2004).
Appeal 2009-015074
Application 11/313,451

5
the halide content limitation of dependent claims 37-38, the porosity/density
limitation of independent claim 39, and the ratio limitation of independent
claim 41 (Ans. 4-5, para. bridging 6-7).

Indeed, because Appellants’ argument against this rejection is not
applicable to claims 39-41 (i.e., these claims do not require the bend strength
property argued by Appellants), we summarily sustain the rejection of these
claims as being anticipated by, or alternatively as being obvious over, JP
748.

Furthermore, in view of the above noted commonalities, the Examiner
properly determined that the JP 748 compositions inherently possess the
inter-grain bend strength of claim 36 and properly required Appellants to
prove that the JP 748 compositions do not necessarily or inherently possess
the bend strength characteristic of the claim 36 compositions. See In re Best,
562 F.2d 1252, 1254-55 (CCPA 1977). Appellants have not attempted to
provide this record with any such proof.

It follows that we also sustain the rejection of independent claim 36
and dependent claims 37-38 as being anticipated by, or alternatively as being
obvious over, JP 748.

In summary, we have sustained each of the § 102 and § 103 rejections
of claims 36-41 based on JP 748.

Appeal 2009-015074
Application 11/313,451

6
As for the rejections based on Sakurai, Appellants argue that the
Examiner incorrectly found Sakurai’s metal nitride compositions possess the
claimed impurity, density, and porosity properties and that the Examiner
incorrectly shifted to Appellants the burden of showing otherwise (Brief 9-
10).

As an initial matter, we observe that Appellants’ argument fails to
contest with any reasonable specificity the Examiner’s finding that Sakurai’s
compositions possess the bend strength property of independent claim 36
and the ratio characteristic of independent claim 41. For this reason, and
because these independent claims are not limited to any of the properties
argued by Appellants, it is proper to sustain the Examiner’s rejections of
independent claims 36 and 41. Further, Appellants’ argument does not
address much less show error in the Examiner’s rationale for finding that
Sakurai’s express (as opposed to inherent) teaching satisfies the impurity
requirements of claims 1 (note that claim 1 requires only “one or more” of
the listed properties and accordingly the property requirement is satisfied
when the prior art possesses a single one of these properties such as the
impurity content property), 10, and 37-38 (Ans. 3). In essence, therefore,
Appellants have failed to provide this record with any reasonably specific
argument against the Examiner’s rejections of claims 1-23, 36-38 and 41-42.
It follows that we summarily sustain these rejections.

The remaining claims on appeal and under the rejection require at
least one of the properties argued by Appellants. As indicated above,
Appellants’ argument does not address and therefore does not show error in
Appeal 2009-015074
Application 11/313,451

7
the Examiner’s rationale for finding Sakurai’s compositions possess the
claimed impurity limitation. As for the Examiner’s finding that the
compositions of Sakurai necessarily and inherently possess the claimed
porosity and density properties, Appellants contend that the Examiner’s
inherency finding is incorrect because different processes are used for
making the compositions defined by the rejected claims and the
compositions disclosed by Sakurai. Appellants express this contention as
follows.
The process of Sakurai uses organometallic compounds
(e.g. trimethyl gallium) as the Group III metal source and reacts
them with ammonia or other nitrogen source by bubbling to
deposit them on a substrate surface. The present invention on
the other hand, discloses a preferred process in which a high
purity Group III metal (e.g. gallium) is converted to a
polycrystalline metal nitride by reacting it with ammonia, using
HCl or another halide containing gas. Such a process can result
in a crystal with the claimed properties. Because of the many
differences between the processes, there is simply no indication
that the process of Sakurai will necessarily produce a group III
metal nitride with the claimed properties. Thus, any inherency
argument also fails.
(Br. 10).

This contention is deficient in a number of respects. First, Appellants
do not identify disclosures in Sakurai and their Specification which reveal
the asserted process differences. Second, Appellants compare the process of
Sakurai to “a preferred process” (id.) for making their claimed compositions.
As a result, Appellants have failed to provide this record with even an
allegation that nonpreferred processes for making their compositions are
different from the process of Sakurai. In this regard, Appellants’ above
Appeal 2009-015074
Application 11/313,451

8
quoted contention, that Sakurai uses organometallic compounds whereas
their preferred process does not, is undermined by their Specification
disclosure that “metals may be introduced as an organometallic compound”
(Spec. para. bridging 19-20).

Appellants further argue that no evidence supports the Examiner’s
finding that the Sakurai compositions necessarily or inherently possess the
claimed porosity and density properties (Br. 9-10).

Appellants are incorrect. As previously indicated, Appellants have
not contested with any reasonable specificity the Examiner’s findings that
Sakurai’s compositions possess the claimed properties of impurity content
(claims 1, 10, 37-38), bend strength (claim 36), and grain size to diameter
ratio (claim 41). On the record of this appeal, therefore, the compositions
defined by the rejected claims and disclosed by Sakurai share many
undisputed commonalities. These shared commonalities evince that the
Examiner properly found the Sakurai compositions possess the claimed
porosity and density properties and properly required Appellants to prove
otherwise. See Best, at 1254-55.

For the above stated reasons, we also sustain the Examiner’s § 102
and § 103 rejections of claims 39 and 40 based on Sakurai.

In summary, we have sustained each of the § 102 and § 103 rejections
of all appealed claims based on Sakurai.

Appeal 2009-015074
Application 11/313,451

9
The decision of the Examiner is affirmed.

AFFIRMED
bar

MOMENTIVE PERFORMANCE MATERIALS INC.-QUARTZ
C/O DILWORTH & BARRESE, LLP
1000 WOODBURY ROAD
SUITE 405
WOODBURY, NY 11797