Ex parte PROSCIA et al.

Board of Patent Appeals and Interferences

Jul 30, 1998

08083206 (B.P.A.I. Jul. 30, 1998)

Application for patent filed June 24, 1993. According1
to the appellants, the application is a continuation of
Application No. 07/806,174, filed December 13, 1991.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES W. PROSCIA, KEITH B. WILLIAMS and GENE P. RECK
____________
Appeal No. 95-3462
Application No. 08/083,2061
____________
ON BRIEF
____________
Before CAROFF, PAK and WARREN, Administrative Patent Judges.
CAROFF, Administrative Patent Judge.
DECISION ON APPEAL
This decision on appeal relates to the final rejection of
claims 1-18, all the claims pending in the involved
application.
Appeal No. 95-3462
Application No. 08/083,206
2
The claims on appeal are directed to a chemical vapor
deposition (CVD) process involving the formation of a metal
nitride.
Appellants indicate on page 3 of their appeal brief that
the patentability of the appealed claims is not argued
separately. Accordingly, all of the claims stand or fall with
representative claim 1 which reads as follows:
1. A chemical vapor deposition process for preparing a
metal nitride, comprising contacting a metal halide with an
amine at a temperature sufficient to form a metal nitride.
The examiner relies upon the following four prior art
references of record to support multiple rejections of the
claims:
Bohg et al. (Bohg) 4,091,169 May 23,
1978
Gordon 4,535,000 Aug. 13,
1985
Goodman et al. (Goodman) 4,946,712 Aug.
7, 1990
Matsumura 62-70208 (Japan) Mar. 31,
1987
The following rejections constitute the basis for this
appeal:
I. Claims 1-3, 5 and 7-9 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Matsumura.
Appeal No. 95-3462
Application No. 08/083,206
3
II. Claims 4, 6 and 10-18 stand rejected for obviousness
under 35 U.S.C. § 103 in view of Matsumura.
III. Claims 1-18 stand rejected for obviousness under
35 U.S.C. § 103 in view of either Goodman or Gordon, with each
taken in combination with Bohg.
We affirm the rejections which are based upon Goodman,
Gordon and Bohg essentially for the reasons presented in the
examiner’s answer. On the other hand, we reverse those
rejections which are based upon the Matsumura reference.
As for Matsumura, we agree with appellants that the
reference does not teach reacting a metal halide with an amine
to form a metal nitride via CVD. As we construe appellants’
claims, the step of contacting a metal halide with an amine to
form a metal nitride is to be performed by a CVD method. In
contrast, Matsumura suggests reacting a metal halide with an
amine in the liquid phase at a relatively low temperature.
While Matsumura does mention that CVD techniques have been
used in the prior art to form metal nitrides, there is no
indication that these prior art CVD techniques involved
contacting a metal halide with an amine.
Appeal No. 95-3462
Application No. 08/083,206
4
We now turn to the rejections grounded upon the combined
teachings of Goodman or Gordon with Bohg. Appellants do not
seriously take issue with the propriety of the combination of
references. Instead, appellants urge that application of the
collective teachings of the references, i.e. substitution of
amine for the ammonia reactant in Goodman or Gordon as
suggested by Bohg, would be expected to result in the
formation of a carbon-containing metal nitride rather than a
“substantially carbon-free” metal nitride. As noted by the
examiner, this argument is not persuasive since the appealed
claims, as presently constituted, do not preclude the
formation of a metal nitride which contains carbon.
Moreover, we cannot agree with the comment on page 6 of
appellants’ brief to the effect that the limitation
“substantially carbon-free” is somehow inherent in the claims.
We decline to read limitations into the claims which are not
explicitly recited therein. See In re Prater, 415 F.2d 1393,
1404-1405, 162 USPQ 541, 550-551 (CCPA 1969). The term
“nitride,” as used in the claims, is apparently a generic term
which embraces carbonitrides as well as those that are
substantially carbon-free. Appellants have presented no
Appeal No. 95-3462
Application No. 08/083,206
5
evidence or convincing explanation to the contrary. Indeed,
appellants apparent need for using the qualifying expression
“substantially carbon-free” on page 5, line 14, of their
specification (in order to distinguish over carbonitrides of
the prior art) represents an implicit acknowledgement of the
generic reach of the term “nitride.”
Appeal No. 95-3462
Application No. 08/083,206
6
In the event of further prosecution of the present claims
by appellants (as in a continuation application), we suggest
that the examiner revisit the Reedy and Schintlmeister
references cited on page 2 of appellants’ specification since
they apparently teach the CVD reaction of a metal halide with
an amine to form a metal carbonitride film. The present
claims fail to distinguish over such prior art processes
since, as previously noted, the claims do not preclude
formation of a carbon-containing metal nitride; nor is it
clear that appellants’ metal nitrides in fact differ from the
carbonitride products of the prior art.
Appeal No. 95-3462
Application No. 08/083,206
7
For the foregoing reasons, the decision of the examiner
is affirmed.
AFFIRMED

MARC L. CAROFF )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
Appeal No. 95-3462
Application No. 08/083,206
8
Lorraine S. Melotik
Ford Motor Company
Parklane Towers East - Suite 911
Dearborn, MI 48126
Appeal No. 95-3462
Application No. 08/083,206
9
MLC/jrg
JENINE GILLIS

Appeal No. 95-3462
Serial No. 08/083,206
Judge CAROFF
Judge WARREN

Judge PAK
Received: 27 Jul 98
DECISION: AFFIRMED

Send Reference(s): Yes No
or Translation(s)
Panel Change: Yes No
3-Person Conf. Yes No
Heard: Yes No
Remanded: Yes No
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