Murata Manufacturing Co., Ltd.

Patent Trials and Appeals Board

Dec 16, 2020

2020001266 (P.T.A.B. Dec. 16, 2020)

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. 15/632,760 06/26/2017 YASUHIRO AIDA 036433.03789 8365 38485 7590 12/16/2020 ARENT FOX LLP - New York 1717 K Street, NW Washington, DC 20006-5344 EXAMINER OUTTEN, SAMUEL S ART UNIT PAPER NUMBER 2843 NOTIFICATION DATE DELIVERY MODE 12/16/2020 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): patentdocket@arentfox.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YASUHIRO AIDA and KEIICHI UMEDA ____________ Appeal 2020-001266 Application 15/632,760 Technology Center 2800 ____________ Before ADRIENE LEPIANE HANLON, CHRISTOPHER C. KENNEDY, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellant requests review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1-4, 10-14, and 20.1,2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Murata Manufacturing Co., Ltd. as the real party in interest. Appeal Brief filed July 11, 2019 (“Appeal Br.”) at 2. 2 Final Office Action entered March 6, 2019 (“Final Act.”) at 1. Appeal 2020-001266 Application 15/632,760 2 CLAIMED SUBJECT MATTER Appellant claims a piezoelectric film and a piezoelectric vibrator. Appeal Br. 2-3. Independent claims 1 and 11 illustrate the subject matter on appeal, and read as follows: 1. A piezoelectric film comprising: crystalline AlN; at least one first element partially replacing Al in the crystalline AlN; and a second element doping the crystalline AlN, the second element being a trivalent cation having a coordination number of 4 or 6, and having an ionic radius smaller than an ionic radius of the first element and larger than an ionic radius of Al. 11. A piezoelectric vibrator comprising: a first electrode; a second electrode; a piezoelectric film between the first and second electrodes, the piezoelectric film comprising: crystalline AlN; at least one first element partially replacing Al in the crystalline AlN; and a second element doping the crystalline AlN, the second element being a trivalent cation having a coordination number of 4 or 6, and having an ionic radius smaller than an ionic radius of the first element and larger than an ionic radius of Al. Appeal Br. 8-9 (Claims Appendix) (emphasis added). REJECTIONS The Examiner maintains the following rejections in the Examiner’s Answer entered October 10, 2019 (“Ans.”): Appeal 2020-001266 Application 15/632,760 3 I. Claims 1-3, 11-13, and 15-18 under 35 U.S.C. § 102(a)(1) as anticipated by Stephanou et al. (US 2014/0125432 Al, published May 8, 2014); and II. Claims 4, 10, 14, and 20 under 35 U.S.C. § 103 as unpatentable over Stephanou. FACTUAL FINDINGS AND ANALYSIS Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions, we reverse the Examiner’s rejection of claims 1-3, 11-13, and 15-18 under 35 U.S.C. § 102(a)(1), and rejection of claims 4, 10, 14, and 20 under 35 U.S.C. § 103, for the reasons set forth in the Appeal and Reply Briefs, and below. Independent claims 1 and 11 both require the recited piezoelectric film to comprise crystalline AlN, with at least one first element partially replacing Al in the crystalline AlN, and a second element doping the crystalline AlN. The Examiner finds that Stephanou discloses a piezoelectric film comprising crystalline AlN that includes scandium partially replacing Al in the crystalline AlN, and chromium doping the crystalline AlN. Final Act. 2- 3 (citing Stephanou ¶¶ 42, 58, 59; Figs. 2A-2H). Contrary to the Examiner’s findings, however, Stephanou discloses crystalline AlN that includes scandium as a dopant, rather than as a replacement for Al in the crystalline AlN. More specifically, Stephanou discloses a thin-film structural layer formed from a crystalline piezoelectric material, such as doped aluminum nitride (AlN), and Stephanou discloses that suitable dopants include “one or more of Scandium (Sc) ions, Erbium (Er) ions, Chromium (Cr) ions, or one or more other types of ions.” Appeal 2020-001266 Application 15/632,760 4 Stephanou ¶¶ 39, 42, 58, 59; Figs. 2A-2H. Stephanou thus discloses crystalline AlN that may include both scandium and chromium dopants. Appellant argues that the Examiner’s finding that Stephanou discloses crystalline AlN that includes scandium partially replacing Al in the crystalline AlN, and chromium doping the crystalline AlN, is based on the “Examiner continually and improperly interchang[ing] the terms ‘doping’ and ‘replacement’ in the instant case as if they were the same thing.” Appeal Br. 6. In response to Appellant’s argument, the Examiner determines in the Answer that because “no special definition is provided in the specification or the claims for the term ‘partially replacing,’ the term should only be interpreted to indicate the presence of the at least one element amongst a plurality of AIN molecules.” Ans. 6-7. As Appellant argues, however, the Examiner’s interpretation of “partially replacing” as recited in claim 1 is inconsistent with the plain meaning of this term and with the disclosures in Appellant’s Specification, and the Examiner’s interpretation, therefore, is unduly broad. Reply Br. 3. More specifically, we do not find an explicit definition of “partially replacing” in Appellant’s Specification. Nor do we find an explicit definition of “doping” in the Specification. As Appellant points out, however, the Specification uses these two terms to describe distinct structural modifications of crystalline AlN, “and at no point suggests that doping and replacement are synonymous.” Reply Br. 3; see e.g. Spec. ¶¶ 12, 33 (using the terms “replaces” and “doped” to connote distinct structural roles for first and second elements in crystalline AlN). The plain and ordinary meaning of “replace” is “to assume the former role, position, or function of; substitute for (a person or thing).” Dictionary.com, https:// Appeal 2020-001266 Application 15/632,760 5 www.dictionary.com/browse/replace. The plain and ordinary meaning of a “dopant” is “an impurity added intentionally in a very small, controlled amount to a pure semiconductor to change its electrical properties.” Dictionary.com, https:// www.dictionary.com/browse/dopant. Consistent with the disclosures in Appellant’s Specification, and according to the plain meaning of “replace” and “dopant,” we interpret “partially replacing” and “doping” as recited in claims 1 and 11 as referring to distinct structural modifications of crystalline AlN, with “partially replacing” referring to substitution of at least one element for Al in the crystalline AlN, and “doping” referring to adding an element to the crystalline AlN. In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (During prosecution of patent applications, “the PTO must give claims their broadest reasonable construction consistent with the specification. . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.”). The Examiner’s interpretation of “partially replacing” as “indicat[ing] the presence of the at least one element amongst a plurality of AlN molecules” is, therefore, unduly broad because it is inconsistent with the plain and ordinary meaning of this phrase, and with how the phrase is used in the Specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (the words of a claim must be given their plain meaning unless the plain meaning is inconsistent with the specification.). Nonetheless, the Examiner further responds to Appellant’s arguments in the Answer by indicating that “[t]he term ‘doping,’ as was known in the art and with regards to crystals, conventionally happens in three different ways.” Ans. 7. The Examiner explains that “[t]he first is empty space Appeal 2020-001266 Application 15/632,760 6 diffusion, where dopant (introduced impurity) atoms migrate to empty spaces in the crystal lattice,” “[t]he second is interstitial or inter lattice diffusion, where the dopant atoms move to spaces between the atoms in the crystal lattice, and do not fill spaces of the crystal lattice itself,” and “[t]he third is substitution, where an atom in the crystal lattice is replaced with an atom of the dopant.” Ans. 7-8. The Examiner finds that “doping” as disclosed in Stephanou, therefore, “would include empty space diffusion, interstitial diffusion, and substitution,” and “dopants placed by empty space diffusion may be indistinguishable from those placed by substitution.” Ans. 8. The Examiner determines that “‘[p]artially replacing’ may thus be considered to be ‘doping,’ and ‘doping’ includes ‘partially replacing.’” Id. We point out initially that it appears that the Examiner makes these assertions for the first time during prosecution of the present application in the Answer. Furthermore, the Examiner does not provide any objective evidence to support these assertions, which Appellant challenges, arguing that “[t]he Examiner’s mere speculation regarding how the term ‘doping’ would be ‘known in the art’ is improper in this case” because “it fails to comply with the basic procedural requirements necessary to establish official notice.” Reply Br. 4. Although the Examiner may take official notice of technical facts outside of the record to fill gaps that might exist in the evidentiary showing necessary to satisfy the Examiner’s burden of establishing anticipation, such asserted technical facts must be “capable of such instant and unquestionable demonstration as to defy dispute.” In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970). “Assertions of technical facts in areas of esoteric technology must always be supported by citation to some reference work recognized as Appeal 2020-001266 Application 15/632,760 7 standard in the pertinent art. . . . Allegations concerning specific ‘knowledge’ of the prior art, which might be peculiar to a particular art, should also be supported.” Id. The Examiner’s official notice that it is known in the art that substitution is a form of doping, although not denominated as such, is improper because Appellant challenges this finding, and the Examiner does not provide objective evidence in response to support the finding, due to the fact that the Examiner took official notice for the first time in the Answer. MPEP § 2144.03(C) (“If Applicant Traverses a Factual Assertion as Not Properly Officially Noticed or Not Properly Based Upon Common Knowledge, the Examiner Must Support the Finding With Adequate Evidence”). Because the Examiner’s rejection of claims 1 and 11 is based on an unsupported, overly broad interpretation of “partially replacing,” and also improperly relies on official notice, the Examiner does not provide a sufficient factual basis to establish that Stephanou discloses a piezoelectric film comprising crystalline AlN, with at least one first element partially replacing Al in the crystalline AlN, and a second element doping the crystalline AlN, as required by claims 1 and 11. The Examiner, therefore, does not establish that Stephanou anticipates the subject matter of these claims. We, accordingly, do not sustain the Examiner’s rejection of claims 1 and 11, and claims 2, 3, 12, 13, and 15-18, which each depend from either claim 1 or claim 11, under 35 U.S.C. § 102(a)(1). We also do not sustain the Examiner’s rejection of claims 4, 10, 14, and 20 under 35 U.S.C. § 103 as unpatentable over Stephanou, because this rejection suffers from the same deficiencies as the Examiner’s rejection under 35 U.S.C. § 102(a)(1). Final Appeal 2020-001266 Application 15/632,760 8 Act. 4-5. CONCLUSION Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 11-13, 15-18 102(a)(1) Stephanou 1-3, 11-13, 15-18 4, 10, 14, 20 103 Stephanou 4, 10, 14, 20 Overall Outcome 1-4, 10-14, 20 REVERSED