Ex Parte Poetsch et al

Board of Patent Appeals and Interferences

Sep 7, 2012

11366634 (B.P.A.I. Sep. 7, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/366,634 03/02/2006 Christian Poetsch 3639 3118
7590 09/07/2012
STRIKER, STRIKER & STENBY
103 EAST NECK ROAD
HUNTINGTON, NY 11743
EXAMINER
RAO, G NAGESH
ART UNIT PAPER NUMBER
1714
MAIL DATE DELIVERY MODE
09/07/2012 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 CHRISTIAN POETSCH,
Gunther Wehrhahn, Lutz Parthier, Hans-Joerg Axmann, and
Joerg Staeblein
________________

Appeal 2011-002598
Application 11/366,634
Technology Center 1700
________________

Before TERRY J. OWENS, HUBERT C. LORIN, and MARK NAGUMO,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-002598
Application 11/366,634

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A. Introduction1
Christian Poetsch, Gunther Wehrhahn, Lutz Parthier,
Hans-Joerg Axmann, and Joerg Staeblein (“Poetsch”) timely appeal under
35 U.S.C. § 134(a) from the final rejection2 of claims 21-31 and 333 We
have jurisdiction. 35 U.S.C. § 6. We REVERSE for the reasons well-stated
by Poetsch in the Brief.
The subject matter on appeal relates to a method of preparing CaF2
single crystals having low stress and reduced light scattering. Such crystals
are said to be useful for deep UV optics, e.g., as windows for
photolithography. (Spec. 1, ll. 5-14.) According to the 634 Specification,
the inventors discovered that, in contrast to the teachings of the prior art,
rapid cooling, greater than 10 degrees Kelvin per hour (10 K/h) of a CaF2
crystal just obtained from the melt, prior to further cooling to room
temperature, and prior to subsequent tempering treatments (in which a pre-
formed crystal is heated to a temperature in the range of 1100°C and then
cooled), provides the desired uniform, stress-free, low-scattering crystals.

1 Application 11/366,634, Method of Making Highly Uniform Low-Stress
Single Crystals with Reduced Scattering, filed 2 March 2006, claiming the
benefit of two applications filed in Germany on 8 and 24 March 2005. The
specification is referred to as the “634 Specification,” and is cited as “Spec.”
The real party in interest is listed as HELLMA Materials GmbH & Co. KG.
(Appeal Brief, filed 2 July 2010 (“Br.”), 3.)
2 Office action mailed 10 November 2009 (“Final Rejection”).
3 Remaining copending claims 14-20 have been withdrawn from
consideration by the Examiner. (Fr. 1; Br. 5.)
Appeal 2011-002598
Application 11/366,634

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Claim 21 is representative and reads:
21. A method of making a highly uniform, low-stress large-
volume single crystal of calcium fluoride, said method
comprising the steps of:
a) growing a single crystal consisting of calcium fluoride
from a melt;
b) after the growing of the single crystal of step a),
cooling the single crystal to room temperature and at a
pre-tempering cooling rate of at least 10 K/h-in a first
pre-tempering cooling stage between 1300°C
and 1050°C;
c) after the cooling to said room temperature of step b),
heating the single crystal from said room temperature to a
tempering temperature that is not above 1100°C;
d) holding the single crystal at said tempering
temperature for a holding period from 24 to 240 h; and
e) after the holding period of step d), cooling the single
crystal at a post-tempering cooling rate between 0.1
and 0.3 K/h in a range between the tempering
temperature and 800°C.
(Claims App., Br. 27; indentation and emphasis added.)
The Examiner maintains the following grounds of rejection:4
A. Claims 21-31 and 33 stand rejected under 35 U.S.C. § 102(e) in
view of Staeblein.5
B. Claims 21-31 and 33 stand rejected under 35 U.S.C. § 102(b) in
view of Garibin.6

4 Examiner’s Answer mailed 25 August 2010 (“Ans.”).
5 Joerg Staeblein and Lutz Parthier, Method of Making Large-Volume CaF2
Crystals, U.S. Patent Application Publication 2005/0183659 A1
(25 August 2005), based on an application filed 22 February 2005.
Appeal 2011-002598
Application 11/366,634

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B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
To be anticipatory, a reference must describe, either expressly or
inherently, each and every claim limitation, arranged or combined as
required by the claimed invention, and enable one of skill in the art to
practice an embodiment of the claimed invention without undue
experimentation. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)
(quotations and citations omitted).
As Poetsch explains in detail (Br. 13-19), Staeblein does not describe
any cooling rates for the pre-tempering cooling required by step b) of the
claims. The only cooling rates described by Staeblein are for pre-formed
crystals that are heated from room temperature to a tempering temperature,
and then cooled. Staeblein does not anticipate the appealed claims.
Poetsch finds that Garibin does describe pre-tempering cooling rates
of at least 0.7°C/hr. (Br. 20, citing Garibin [0011].) This generic disclosure
of a cooling rate that encompasses cooling rates of greater than 10K/h does
not suffice as an anticipatory disclosure. Atofina v. Great Lakes Chem.
Corp., 441 F.3d 991, 999 (Fed. Cir. 2006) (“It is well established that the
disclosure of a genus in the prior art is not necessarily a disclosure of every
species that is a member of that genus.”) As Poetsch argues (Br. 20-21), the
pre-tempering rates described by Garibin correspond to standard prior art

6 Evgeny A. Garibin et al., Process for Growing Calcium Fluoride
Monocrystals, U.S. Patent Application Publication 2002/0185057 A1
(2002).
Appeal 2011-002598
Application 11/366,634

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pre-tempering cooling rates that are much less than the 10K/h rates recited in
the appealed claims. Moreover, the tempering step disclosed by Garibin
requires heating to a holding temperature of 1100-1300°C, followed by
cooling rates (2-4°C/h to 950-900°C, and 5-8°C/h to 300°C) that are far
greater than the 0.1 to 0.3 K/h required by step d) from the tempering
temperature (not greater than 1100°C) down to 800°C. (Garibin [0015];
argued at Br. 22, 2d full para., to 23, 2d para.) Thus, Garibin does not
anticipate the appealed claims.
At best, the Examiner’s arguments (Ans. 7-8) fail to give proper
weight to the order of the steps required by the claims.
C. Order
We REVERSE the rejection of claims 21-31 and 33 under
35 U.S.C. § 102(e) in view of Staeblein.
We REVERSE the rejection of claims 21-31 and 33 under
35 U.S.C. § 102(b) in view of Garibin.
REVERSED
sld