Ex Parte Plankensteiner et al

Patent Trial and Appeal Board

Jun 5, 2018

13568928 (P.T.A.B. Jun. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/568,928 08/07/2012
24131 7590 06/07/2018
LERNER GREENBERG STEMER LLP
PO BOX 2480
HOLLYWOOD, FL 33022-2480
FIRST NAMED INVENTOR
ARNO PLANKENSTEINER
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.
SB-697 2153
EXAMINER
CHOU, JIMMY
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
06/07/2018 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):
boxoa@patentusa.com
docket@patentusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARNO PLANKENSTEINER, CHRISTIAN FEIST,
VADIM BOGUSLA VSKIY, ALEXANDER I. GURARY, and
CHENGHUNGPAULCHANG
Appeal2017-006796
Application 13/568,928
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Amo Plankensteiner et al. ("Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision in the Final Action (dated Aug. 30,
2016, hereinafter "Final Act.") rejecting claims 1, 8-11, 18-21, and 23. 2 We
have jurisdiction under 35 U.S.C. § 6(b ).
1 According to Appellants' Appeal Brief (hereinafter "Br."), filed Nov. 22,
2016, the real parties in interest are Plansee SE and Veeco Instruments Inc.
Br. 1.
2 Claims 2-7, 12-17, and 22 are canceled. Appellants' Amendment 2--4
(filed Aug. 16, 2016).
Appeal2017-006796
Application 13/568,928
We REVERSE.
SUMMARY OF DECISION
INVENTION
Appellants' invention relates "to a terminal for a mechanical support
of a heating element" for a metal organic vapor deposition (MOCVD)
heater. Spec. paras. 1, 2.
Claims 1, 11, 21, and 23 are independent. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A terminal for mechanical support of a heating element in
a MOCVD reactor, comprising a base device, a mounting device,
the mounting device being configured to mechanically support
the heating element in the MOCVD reactor, and a support device
connecting the base device to the mounting device, said support
device being a leaf spring having two or more leaves disposed at
a spacing distance from one another and arranged in a
substantially parallel orientation, said support device allowing
displacement of the heating element about a single main elastic
direction being oriented substantially along a radial direction
defined by a planar extension of the heating element when
mounted at the mounting device, and wherein a material of the
terminal comprises at least 90% by weight of a refractory metal
selected from the group consisting of tungsten, an alloy of
tungsten, molybdenum, and an alloy of molybdenum.
REJECTIONS
I. Claims 1, 8-11, and 18-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Uchiyama et al. (US 2002/0158060 Al, pub. Oct.
31, 2002, hereinafter"Uchiyama"), Watson (US 1,759,722, iss. May
20, 1930), and Mitoff et al. (US 4,833,039, iss. May 23, 1989,
hereinafter "Mitoff').
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Application 13/568,928
II. Claims 21 and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Uchiyama and Watson.
ANALYSIS
Rejection I
Each of independent claims 1 and 11 requires, inter alia, "a material
of the terminal compris[ing] at least 90% by weight of a refractory metal
selected from the group consisting of tungsten, an alloy of tungsten,
molybdenum, and an alloy of molybdenum." Br. 13-14 (Claims App.).
The Examiner finds that Uchiyama and Watson disclose many of the
limitations of independent claims 1 and 11 (see Final Act. 2-3), but relies on
Mitoff for the above noted limitation and concludes that it would have been
obvious to a person of ordinary skill in the art to make Uchiyama's terminal,
as modified by Watson, from Mi to ff' s "refractory metal in order to provide
heat-resistan[ce] and wear[] during [the] heating process." Id. at 4 (citing
Mitoff, col. 4, 11. 44--52).
We agree with Appellants that "the teachings of the secondary
reference Mitoff do not properly modify the primary teachings of
Uchiyama," because the Examiner has not established adequately that Mitoff
teaches that "a material of the terminal comprises at least 90% by weight of
a refractory metal," as called for by each of independent claims 1 and 11.
Br. 11. Although we appreciate that the portion of Mitoff relied on by the
Examiner discloses refractory metals, namely, tungsten and molybdenum,
the Examiner does not point to any portion of Mitoff that discloses at least
90% by weight of a refractory metal. Rather, Mitoff discloses that a
metallization for filling a feedthrough hole includes a "refractory metal
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Application 13/568,928
ranging from about 25% by volume to about 75% by volume of said
metallization." Mitoff, col. 2, 11. 1-13.
In conclusion, we find that the Examiner's legal conclusion of
obviousness is not supported by sufficient factual evidence, and thus, cannot
stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Accordingly,
for the foregoing reasons, we do not sustain the rejection under 35 U.S.C.
§ 103(a) of claims 1, 8-11, and 18-20 as unpatentable over Uchiyama,
Watson, and Mitoff.
Rejection II
Claim 21
Independent claim 21 recites, in relevant part, "said base device, said
support device and said mounting device forming an assembly configured to
withstand prevailing operating temperatures in the MOCVD reactor." Br. 15
(Claims App.).
The Examiner considers that the above limitation is an "intended use"
limitation that depends on the operating temperature of the device. Final
Act. 7. According to the Examiner, the "MOCVD reactor does not limit the
structure of the claimed invention (i.e., the terminal)," because the
"MOCVD reactor is not part of the terminal." Examiner's Answer 13 (dated
Dec. 23, 2016, hereinafter "Ans.").
Appellants argue that claim 21 does not recite an MOCVD reactor
only in the preamble, but also in the body of the claim, and requires that "the
elements of the claimed device must necessarily be able to withstand the
extremely harsh environment in the MOCVD reactor." Br. 6.
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Application 13/568,928
The phrase "configured to" is used to mean "'made to,' 'designed
to."' In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014) (citingAspex
Eyewear, Inc. v. Marchan Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir.
2012)). In this case, the Examiner does not explain adequately how
Uchiyama's device is "made to," "designed to," or "configured to"
withstand prevailing operating temperatures in the MOCVD reactor.
Appellants' Specification states that a problem with known terminals is
thermally induced deformation resulting from "the MOCVD process inside
of the reactor, [wherein] the heater is heated up to 1000 to 2200° C." Spec.
para. 3. In comparison, Uchiyama is directed to a wafer heating apparatus
and discloses a known heating apparatus that heats "at a high temperature
(500° C, or higher)." Uchiyama, para. 14. As such, it is not clear from the
Examiner's position why Uchiyama's device is "made to," "designed to," or
"configured to" withstand the 1000° to 2200° C temperatures in a MOCVD
reactor.
Accordingly, we agree with Appellants that the "device [of
Uchiyama] must necessarily be formed (i.e., shape, material, structural
characteristics)" to be able to withstand the operating temperatures in a
MOCVD reactor. Br. 7. As the Examiner has not made sufficient findings
that Uchiyama is so configured, and the use of Watson's disclosure does not
remedy the deficiency of Uchiyama, we do not sustain the rejection of
independent claim 21 over the combined teachings of Uchiyama and
Watson.
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Claim 23
Claim 23 recites, in relevant part, "said leaf spring being configured to
allow a displacement of said mounting device . . . about a radial axis of the
heating element and less than about 10% displacement of the mounting
device about a tangential direction or parallel to an axis of the round heating
element." Br. 16 (Claims App.).
The Examiner considers the above limitation an "intended use"
limitation, and, thus, states that Uchiyama's "leaf spring is capable of
allowing a displacement of the mounting device." Final Act. 9 (emphasis
omitted). According to the Examiner, "it is inherent that the leaf spring is
[a] resilient or elastic structure [such] that at least a portion of [the] leaf
spring can be moved in directions (i.e., up, down, left and right, radial) that
is solely based on the object(s) acting upon the leaf spring." Ans. 14.
Although we appreciate the Examiner's position in the Final Action
that Uchiyama is "capable of' allowing displacement, and in the Answer
that a leaf spring is inherently resilient and can be moved in any direction,
nonetheless, the Examiner has not explained adequately how Uchiyama's
device is "configured to" allow displacement in the claimed directions and
also, within the claimed values. More specifically, Uchiyama discloses that
spring 8 applies a "pushing force" to force power supply terminal 7 against
pad electrode 6. Uchiyama, paras. 118-121. Hence, in the first instance, we
agree with Appellants that the force in Uchiyama is in the vertical direction
(axial direction, see Spec. Fig. 5), as viewed with respect to Figure 1 of
Uchiyama. See Br. 8. Likewise, the leaf spring in Watson is a conventional
leaf spring for absorbing vertical forces in a motor vehicle. See Watson, col.
1, 11. 1-5. Given that the springs of both Uchiyama and Watson are designed
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for displacement in the vertical direction, the Examiner does not adequately
explain what further modification to Uchiyama's leaf spring would make it
capable of displacement about a radial axis and, moreover, displacement of
less than about 10% about a tangential direction or parallel to an axis, as
called for by independent claim 23.
As such, the Examiner has not adequately established that Uchiyama's
leaf spring is configured to, or is capable of allowing the claimed
displacement of the mounting device. The Examiner's use of the Watson
disclosure does not remedy the deficiency of Uchiyama.
In conclusion, for the foregoing reasons, we do not sustain the
rejection of claim 23 under 35 U.S.C. § 103(a) as unpatentable over
Uchiyama and Watson.
DECISION
The Examiner's decision to reject claims 1, 8-11, 18-21, and 23 is
reversed.
REVERSED
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