Ex Parte Roucka et al

Patent Trial and Appeal Board

Oct 31, 2016

13619736 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/619,736 09/14/2012
29370 7590
ROBERT A, PARSONS
15615 North 71st Street
Suite 106
Scottsdale, AZ 85254
11/02/2016
FIRST NAMED INVENTOR
Radek Roucka
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.
4573-A47 1881
EXAMINER
INGHAM, JOHN C
ART UNIT PAPER NUMBER
2819
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
rp@pgpct.com
ms@pgpct.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RADEK ROUCKA, MICHAEL LEBBY,
and SCOTT SEMANS
Appeal2015-004467
Application 13/619,736
Technology Center 2800
Before GEORGE C. BEST, DONNA M. PRAISS, and
JULIA HEANEY, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF CASE
Appellants2 appeal under 35 U.S.C. § 134 from the Examiner's
decision to reject claims 1, 2, 4, 5, 7, 9, 11, 12, 14, 15, 17, and 19 under 35
U.S.C. § 103(a) as follows:
1 In this decision, we refer to the Specification filed September 14, 2012
(Spec.), the Final Office Action appealed from mailed March 28, 2014
(Final Act.), the Appeal Brief filed October 20, 2014 (App. Br.), the
Examiner's Answer mailed December 29, 2014 (Ans.), and the Reply Brief
filed March 2, 2015 (Reply Br.).
2 The real party in interest is identified by Appellants as Translucent Inc.
App. Br. 2.
Appeal2015-004467
Application 13/619,736
1. Claims 1, 2, 5, 7, 11, 12, 15, and 17 over Clark3 and Hack4 ; and
2. Claims 4, 9, 14, and 19 over Clark, Hack, and Kouvetakis. 5
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention relates to the deposition of IV semiconductor material
on silicon wafers with a rare earth structure between the IV material and the
silicon substrate. Spec. 1. Claims 1 and 4 are illustrative (subject matter in
dispute italicized):
1. A method of fabricating IV materials on a silicon
substrate comprising the steps of:
providing a crystalline silicon substrate;
epitaxially growing a rare earth structure on the silicon
substrate; and
epitaxially growing a single crystal IV material film on the
rare earth structure, the single crystal IV material film including
at least a layer of single crystal Ge Sn and the step of growing the
single crystal IV material including using a grading profile to
grade Sn through the single crystal GeSn layer.
4. A method as claimed in claim 1 wherein the step of
growing at least the layer including GeSn includes growing the
graded single crystal GeSn layer with a thickness in a range of
approximately 3µm to approximately 5µm.
Claims App'x at App. Br. 31, 32.
Appellants do not separately argue the patentability of dependent
claims 4, 9, 14, and 19. App. Br. 27-29. In accordance with 37 C.F.R.
§ 41.37(c)(l)(iv), claims 9, 14, and 19 will stand or fall together with
claim 4.
3 Clark et al., US 2010/0109047 Al, published May 6, 2010 ("Clark").
4 Hack et al., US 4,547,621, issued Oct. 15, 1985 ("Hack").
5 Kouvetakis, US 2011/0198729 Al, published Aug. 18, 2011.
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Application 13/619,736
OPINION
Claim 1 over Clark and Hack
Regarding claim 1, the Examiner finds that Clark discloses a
crystalline silicon substrate, epitaxially growing a rare earth structure on the
silicon structure, and epitaxially growing a single crystal IV material such as
germanium film on the rare earth structure. Final Act. 2 (citing Clark i-fi-1 40,
45, Fig. 2C). The Examiner also finds that it would have been obvious to
one of ordinary skill in the art at the time of the invention to use Rack's
germanium alloy compositionally graded with tin (Sn) in order to narrow the
IV material's band gap. Id. at 3 (citing Hack 16:40-45).
Appellants contend that the Examiner's rejection of claim 1 is in error
because (1) "[i]n view of prior attempts to add tin to germanium compounds,
... any schemes proposed must show substantial proof of a reasonable
expectation of success[,]" (2) Hack teaches amorphous material and
"amorphous material and single crystal or crystalline material are
substantially different and require substantially different processes for
fabrication[,]" (3) "[n]one of the amorphous materials of Hack et al. could
be incorporated into the single crystal structure of Clark et al. since there
could be no lattice matching, which is critical to the disclosure and invention
of Clark et al.[,]" and (4) Clark does not suggest that "all of the various
forms [of germanium alloy] listed [in Clark] are similar in the art or
otherwise, only that they can exist." App. Br. 10-15.
The Examiner responds that paragraphs 8 and 26 of Clark evidence
that "the disclosed layers of group IV materials may comprise crystalline or
amorphous materials[,]" that the materials "are compatible with known
processing techniques[,]" that "Hack teaches that germanium alloys (similar
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Application 13/619,736
to the IV material of Clark) may be compositionally graded with Sn in order
to modify the band gap, and therefore it would have been obvious to grade
the IV material of Clark with Sn with an expectation of success (i.e. in
tuning the band gap of Clark)." Ans. 2. The Examiner finds that an
expectation of success is evidenced by Clark and Hack which both describe
amorphous and crystalline material being similar, as well as "Kouvetakis
(i-fl3, i-f30), which recites that Sn may be added to Ge (IV material) in order
to modify the lattice constant and band gap of the IV material." Ans. 3. The
Examiner further finds that Kouvetakis teaches the claimed thickness of a
graded layer of GeSn. Final Act. 5, 6.
In the Reply Brief, Appellants argue that paragraphs 8 and 26 of Clark
do not "suggest[] to one of ordinary skill in the art that the amorphous
material of Hack et al. could be mixed with the crystalline material of Clark
et al." Reply Br. 2. Appellants acknowledge that amorphous semiconductor
devices are substantially equivalent to their crystalline counterparts in
operation as taught by Hack, but "[A ]ppellants are stating unequivocally that
layers of amorphous and crystalline material cannot be intermixed and
nothing in either Clark et al. or Hack et al. in any way suggests they can be."
Id. at 3. Appellants further argue that "[a]ny person of ordinary skill in the
art interested in photovoltaic cells as taught by Clark et al. would find no
motivation in narrowing the band gap of semiconductor material by adding
amorphous tin as taught by Hack et al." Id. at 4.
We are not persuaded by Appellants' arguments and find that the
preponderance of the evidence supports the rejection of claim 1 for the
reasons provided by the Examiner in the Final Action and the Answer. Final
Act. 2-3, 6; Ans. 2--4. We add the following for emphasis.
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Application 13/619,736
Appellants' arguments are unpersuasive because the Examiner
correctly finds that Clark teaches that crystalline and amorphous forms of IV
materials are encompassed by Clark's disclosure, as well as mixtures
thereof, not merely that such forms exist. Clark i-f 8. We are not persuaded
that the disclosure in Clark is limited to crystalline lattice structures as
Appellants argue. Clark explicitly states "[d]isclosed layers are, optionally,
single crystal, multi-crystalline or amorphous layers and compatible with
semiconductor processing techniques." Clark i-f 26. Therefore, Clark does
not exclude amorphous layers of IV material in its method. Clark further
teaches that"' [a] layer' may also comprise multiple layers." Id. Clark's
disclosure thus broadly describes the use of both crystalline and amorphous
layers in the IV material layer. Appellants provide only attorney argument
regarding the significance of amorphous and crystalline forms of IV
materials which is insufficient to rebut the evidence cited by the Examiner.
It is well settled that arguments of counsel cannot take the place of factually
supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139--40
(Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
We also find Appellants' arguments unpersuasive because claim 1
does not preclude the presence of an amorphous IV material film nor is
claim 1 limited to photovoltaic cells in any way. Accordingly, the
Examiner's reason for combining the germanium alloy compositionally
graded with tin (Sn) in order to narrow the band gap of the IV material, as
taught by Hack, with Clark's device has a rational underpinning. Moreover,
Appellants acknowledge that amorphous semiconductor devices are
substantially equivalent to their crystalline counterparts in operation. Reply
Br. 3.
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Appellants' argument that the Examiner has not shown "substantial
proof of a reasonable expectation of success" (App. Br. 11) in using Hack' s
teaching to grade the germanium alloy with tin is unpersuasive because the
Examiner has presented both Hack and Kouvetakis as evidence that
germanium alloy graded with tin has a reasonable expectation of success in
terms of either reducing band gap or achieving sufficient thickness to meet
the range recited in dependent claim 4. Appellants have not adequately
rebutted the Examiner's evidence on this record.
In sum, Appellants have not persuaded us of reversible error in the
Examiner's finding that Hack provides a reason for modifying Clark's
method of fabricating IV materials on a silicon substrate and that there is a
reasonable expectation of success in reducing the band gap of the IV
material.
Claims 2, 5, 7, 11, 12, 15, and 17 over Clark and Hack
Appellants contend that the Examiner's rejection of claims 2, 5, 7, 11,
12, 15, and 17 is in error essentially for the same reasons discussed above in
connection with claim 1. App. Br. 17-27. Appellants add that because
Clark does not teach GeSn, "Clark et al. could not, therefore, suggest crystal
lattice matching or crystal lattice mismatching nor could they suggest
providing a stressed single crystal IV material film that is either compressive
or tensile stressed" as required by dependent claim 2. Id. at 17. This
argument is not persuasive because Appellants do not explain why Clark's
teachings of crystal lattice matching or mismatching using a germanium
alloy would not instruct one of ordinary skill in the art of crystal lattice
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matching or mismatching using a germanium alloy as modified by Hack.
Final Act. 3 (citing Clark i-fi-f l 0, 40, 41). 6
Regarding dependent claim 5, which depends from claim 1 and recites
"incorporating a rare earth oxide with electrical insulating characteristics,"
Appellants add that "[s]ince Clark et al. only disclose a solar cell, they could
not possibly suggest the advantages and improvements of the present
invention as specified in claim 5." App. Br. 18-19. This argument is not
persuasive because Appellants do not dispute that Clark discloses the use of
rare earth oxide in its rare earth structure that is a stressed layer adjacent an
insulating layer. Final Act. 3; Clark i-fi-135, 40 and Fig. 14B, item 1410.
Regarding independent claim 7, which incorporates the requirements
of claims 1, 2, and 5 discussed above, Appellants argue that "[ n ]othing in the
teachings of Clark et al. and/ or Hack et al. suggests a method to overcome
the deficiencies of the prior art or in any way suggest grading Sn through the
single crystal layer." App. Br. 21. This argument is not persuasive because
it does not adequately rebut the Examiner's finding that Hack provides a
reason for modifying the IV material layer of Clark to reduce the band gap.
Regarding independent claim 11, which is directed to a device having
the components recited in claim 1, Appellants assert that "substantial proof
of a reasonable expectation of success" is required because "the addition of
tin to germanium makes it very difficult to grow sufficiently thick single
crystal layers of material" and nothing in the combination of Clark and Hack
6 If prosecution continues, we note that dependent claim 2 does not appear to
further limit claim 1 from which it depends as required by 35 U.S.C.
§ 112(d). In both claims 1 and 2, the lattice of the single crystal IV material
film is either matched or mismatched to the rare earth structure and
providing one of an unstressed or a stressed single crystal IV material film.
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Application 13/619,736
"suggest[s] grading Sn through the single crystal layer." App. Br. 21-22.
This argument is not persuasive for the reasons discussed above in
connection with claim 1.
Regarding claim 12, which depends from claim 11 and requires that
the single crystal IV material film includes one of being crystal lattice match
or crystal lattice mismatched to the rare earth structure, Appellants argue
that this limitation would not have been obvious because "Clark et al. do not
suggest an epitaxially grown layer of single crystal GeSn and the single
crystal IV material including graded Sn through the single crystal GeSn
layer." App. Br. 23. This argument is not persuasive because the rejection
is not over Clark alone, nor is Clark cited for teaching Sn graded
germanium. 7 Hack is cited for teaching that Sn graded germanium reduces
the band gap of the IV material.
Regarding claim 15, which depends from claim 11 and requires that
the rare earth structure includes a rare earth oxide with electrical insulating
characteristics, Appellants add that "[ s ]ince Clark et al. only disclose a solar
cell, they could not possibly suggest the advantages and improvements of
the present invention as disclosed for the invention in claim 15." App. Br.
24. This argument is not persuasive because Appellants do not dispute that
Clark discloses the use of rare earth oxide in its rare earth structure that is a
stressed layer adjacent an insulating layer. Final Act. 3; Clark i-fi-135, 40 and
Fig. 14B, item 1410. Moreover, Appellants concede that "many of the rare
7 If prosecution continues, we note that dependent claim 12 does not appear
to further limit claim 11 from which it depends as required by 35 U.S.C.
§ 112( d). In both claims 11 and 12, the lattice of the single crystal IV
material film is either matched or mismatched to the rare earth structure and
providing one of an unstressed or a stressed single crystal IV material film.
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Application 13/619,736
earth oxides provide very good electrical insulation or dielectric
characteristics .... " App. Br. 24. Therefore, the characteristics of the rare
earth oxide required by claim 15 would be inherently possessed by the
materials disclosed in Clark.
Regarding claim 17, which incorporates the requirements of claims
11, 12, and 15 discussed above, Appellants assert that "substantial proof of a
reasonable expectation of success" is required in view of prior attempts to
add tin to germanium described in the Specification and nothing in the
combination of Clark and Hack "suggest[ s] grading Sn through the single
crystal layer." App. Br. 25-27. We are not persuaded by Appellants'
arguments for the same reasons discussed above in connection with claims
1, 11, 12, and 15. Appellants also assert that claim 1 7 requires a rare earth
oxide with electrical insulating characteristics that provide electrical
insulation from the silicon substrate and "[s]ince Clark et al. only disclose a
solar cell, they could not possibly suggest the advantages and improvements
of the present invention as specified in claim 17." Id. at 26.
Claim 4 over Clark, Hack, and Kouvetakis
Regarding claim 4, the Examiner finds that the device of Clark as
modified by Hack does not disclose a graded single crystal GeSn layer with
a thickness in a range of approximately 3µm to approximately 5µm. Final
Act. 5. The Examiner further finds that Kouvetakis teaches a graded layer of
Ge Sn may have a thickness of 50nm to 1 Oµm. Id. (citing Kouvetakis i-f 29).
In the absence of any evidence in this record of criticality in the thickness of
the Ge Sn layer, the Examiner finds that the dimension of the IV material
layer would have been obvious to an ordinary artisan practicing the
invention and a matter of routine experimentation. Id.
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Appellants contend that the Examiner's rejection of claim 4 is in error
because (1) Kouvetakis does not correct the deficiencies of Clark and Hack
identified with respect to claim 1, (2) "Kouvetakis et al. only teach the
formation of a GeSn layer directly on the substrate[,]" and (3) "the three
disclosures cannot be combined since any combination would render the
basic structure unsatisfactory for its intended purpose." App. Br. 28-29.
The Examiner responds that "[n]either Hack nor Kouvetakis teaches
away from adding Sn to the germanium layer of Clark, and it would have
been obvious to do so in order to tune the band gap of Clark." Ans. 4.
In the Reply Brief, Appellants state that "appellants never stated that
either [H]ack et al. or Kouvetakis et al. 'teach away from adding Sn to the
germanium layer of Clark'" and contend that nothing in the references
suggest their combination. Reply Br. 4--5.
We are not persuaded by Appellants' arguments because they are
conclusory. Appellants do not adequately explain why the teaching of Hack
to grade germanium with Sn to reduce the band gap of a device does not
suggest modifying the germanium layer of Clark. In addition, Appellants do
not adequately explain why the teachings of Kouvetakis regarding the
thickness of a GeSn layer would render the combination "unsatisfactory for
its intended purpose." App. Br. 28-29. Appellants do not dispute the
Examiner's finding that there is no criticality of the claimed thickness and,
therefore, the thickness taught by Kouvetakis evidences an expectation of
success in achieving that thickness in the device of Clark as modified by
Hack though routine experimentation.
In sum, Appellants have not persuaded us of a reversible error in the
Examiner's finding that Hack provides a reason for modifying Clark's
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method of fabricating l V materials on a silicon substrate and that there is a
reasonable expectation of success in achieving the claimed thickness of the
Sn graded IV material based on the teachings of Kouvetakis.
CONCLUSION
We sustain the Examiner's rejections.
DECISION
The Examiner's decision is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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