Ex Parte Thompson

Patent Trial and Appeal Board

Sep 7, 2017

13923599 (P.T.A.B. Sep. 7, 2017)

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.
13/923,599 06/21/2013 David Thompson 017137USA 4763
67251 7590 09/11/2017
SFRVTT T A WHTTNFY T T F/AMT
EXAMINER
33 WOOD AVE SOUTH GAMBETTA, KELLY M
SUITE 830
ISELIN, NJ 08830 ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
09/11/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID THOMPSON1
Appeal 2017-002993
Application 13/923,599
Technology Center 1700
Before MARKNAGUMO, JEFFREY B. ROBERTSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Applied Materials, Inc. (“Applied Materials”) timely appeals
under 35 U.S.C. § 134(a) from the Final Rejection2 of all pending claims 1—
5, 7—12, and 14—20. We have jurisdiction. 35 U.S.C. § 6. We affirm.
1 The applicant under 37 C.F.R. § 1.46, and hence the appellant under
35 U.S.C. § 134, is the real party in interest, identified as Applied Materials,
Inc. (Appeal Brief, filed 20 June 2016 (“Br.”), 3.)
2 Office Action mailed 10 December 2015 (“Final Rejection”; cited as
“FR”).
Appeal 2017-002993
Application 13/923,599
OPINION
A. Introduction3
The subject matter on appeal relates to processes of forming metal
oxide films on substrates.
Claim 1 is representative and reads:
A method of depositing a metal oxide film on a substrate
comprising:
(a) exposing a substrate surface to
a metal precursor and
a halide precursor
to provide a metal halide film on the substrate surface,
wherein the metal precursor comprises a group 2 metal,
and wherein the halide precursor is selected from
Cl2, Br2, or I2;
(b) exposing a substrate surface containing the metal
halide film to an oxidant; and
(c) subsequently exposing the substrate surface to heat or
a plasma to provide a metal oxide film on the substrate.
(Claims App., Br. 19; some indentation, paragraphing, and emphasis added.)
3 Application 13/923,599, Deposition of films containing alkaline earth
metals, filed 21 June 2013, claiming the benefit of a provisional application
filed 29 June 2012. The Specification is cited as “Spec.”
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Appeal 2017-002993
Application 13/923,599
The Examiner maintains the following ground of rejection4,5:
Claims 1—5, 7—12, and 14—20 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of Okubo4 5 6
and Lansalot-Matras.7
B. Discussion
The Board’s findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
The Federal Circuit has explained that on appeal, the appellant must
not only show the existence of error, but also that the error was harmful
because it affected the decision below. In re Chapman, 595 F.3d 1330, 1338
(Fed. Cir. 2010), quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009)
(“the burden of showing that an error is harmful normally falls upon the
party attacking the agency’s determination.”).
Applied Materials raises two principal arguments against the
rejection.
4 Examiner’s Answer mailed 7 October 2016 (“Ans.”).
5 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
6 Yasushi Okubo and Hiroshi Kita, Transparent conductive film, method for
producing transparent conductive film and organic electroluminescent
device, U.S. Patent Application Publication 2008/0226924 A1 (2008).
7 Clement Fansalot-Matras and Julien Gatineau, Methods for deposition of
alkaline earth metal fluoride films, U.S. Patent Application Publication
2012/0308739 (6 December 2012), based on an application filed 17 May
2012.
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Appeal 2017-002993
Application 13/923,599
First, Applied Materials urges that Okubo’s stated purpose is to
produce films without the use of ‘high cost and complex vacuum processes’
such as chemical vapor deposition (CVD) chamber.” (Br. 12, 11. 8—10.) In
particular, Applied Materials argues, the atomic layer deposition (“ALD”)
processes of appealed claim 1 and disclosed by Lansalot-Matras are high
cost and complex, and thus would not be used as modifications of the
processes taught by Okubo.
This argument is not persuasive of harmful error. First, Okubo
teaches many instances of CVD methods as preferred because they are
“capable of freely varying the composition of the deposited layer.” (See,
e.g., Okubo 3 [0063]; 6 [0096], cited by the Examiner (Ans. 7,11. 1—3.))
Thus, CVD is well within the ambit of complexity and cost contemplated by
Okubo. Second, generally, it is technological incompatibility, not cost, that
evinces nonobviousness. In re Farrenkopf 713 F.2d 714, 718 (Fed. Cir.
1983) (“That a given combination would not be made by businessmen for
economic reasons does not mean that persons skilled in the art would not
make the combination because of some technological incompatibility.”)
Considering the technical complexity of the organic electroluminescent
elements of concern to Okubo, a far more detailed and precise discussion of
why a well-known process such as ALD would have been technologically
incompatible with the producing such products, or would have been so much
more costly as to be infeasible, would be required to demonstrate that the
routineer would have considered ALD to be an unreasonable extension of
Okubo’s teachings.
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Appeal 2017-002993
Application 13/923,599
Second, Applied Materials urges that the degree of picking and
choosing from among a number of broad unrelated variables is too great to
arrive at the claimed invention. (Br. 14—15.)
The argument presented, however, amounts to enumerating the
number of species disclosed and, while conceding that species are named
that fit in the required categories, urging that the named species are too few
to establish obviousness. The difficulty with such unelaborated “not obvious
to have selected” arguments is that they assume, without demonstrating, that
the person having ordinary skill in the art would have considered the various
selections to be unpredictable and hence unrelated. We are not inclined to
search the record for evidence and make such findings of fact in the first
instance, as our primary function is review, not examination.
Applied Materials does urge that “Okubo does not teach or suggest all
of the process steps required by the claims,” and that “Lansalot-Matras does
not make up for the deficiencies of Okubo.” (Br. 14,11. 1—2 and 5—6,
reciting the steps at 11. 2—5.) A similar statement occurs in the Reply.8
(Reply 3,11. 11—12.) But without more, these utterances amount to mere
unsubstantiated pleading. As our reviewing court has held, “the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (finding no error in the
Board’s refusal to address separately certain claims). Again, we decline to
scour the record in the first instance, seeking evidence that might weigh in
Reply Brief, filed 7 December 2016 (“Reply”).
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Application 13/923,599
favor or against this argument, and then weighing that evidence, without the
input of either Applied Materials or the Examiner.
Applied Materials does not contradict the Examiner’s express findings
(FR 5—7) regarding the remaining claims. The separately listed arguments
(Br. 15—17) amount to reciting the claims, enumerating one or the other of
the two principal arguments, and making unelaborated denials that the
references teach or suggest the further limitations. Thus, we do not regard
these arguments as sufficiently distinct to warrant further review.
We conclude that Applied Materials has not demonstrated harmful
error in the appealed rejection.
C. Order
It is ORDERED that the rejection of claims 1—5, 7—12, and 14—20 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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