SHIN-ETSU CHEMICAL CO., LTD. et al.

Patent Trials and Appeals Board

May 25, 2021

2020006520 (P.T.A.B. May. 25, 2021)

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.
15/887,207 02/02/2018 Hitoshi NOGUCHI 180039 2257
25944 7590 05/25/2021
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
SONG, MATTHEW J
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
05/25/2021 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HITOSHI NOGUCHI, TOSHIHARU MAKINO,
MASAHIKO OGURA, HIROMITSU KATO,
HIROYUKI KAWASHIMA, SATOSHI YAMASAKI, and
NORIO TOKUDA
Appeal 2020-006520
Application 15/887,207
Technology Center 1700

Before DONNA M. PRAISS, N. WHITNEY WILSON, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s October 21, 2019 decision to finally reject claims 1, 7, 10, 13,
16, 19, and 20 (“Final Act.”). A telephonic hearing was held on May 17,
2021, a transcript of which will be made part of the record. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word Appellant to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real parties in interest as Shin-etsu
Chemical Co., Ltd., the National Institute of Advanced Industrial Science
And Technology, and the National University Corporation Kanazawa
University (Appeal Br. 1).
Appeal 2020-006520
Application 15/887,207

2
CLAIMED SUBJECT MATTER
Appellant’s disclosure is directed to a method for producing a
diamond film using chemical vapor deposition and a foundation substrate for
use in the method (Abstract, Appeal Br. 3). An off angle is provided to a
surface of the foundation substrate toward a crystal axis of [-1 -1 2] direction
or its three-fold symmetric direction with respect to a crystal plane
orientation of (111) (Appeal Br. 3). The off angle is in a range of 2 to 15°
(id.). The claimed foundation substrate is said to allow production of
diamond film with fewer defects than prior art foundations (Spec. ¶ 6).
Claim 1, reproduced below from the Claims Appendix, is illustrative of the
claimed subject matter:
1. A foundation substrate for forming a diamond film by a
chemical vapor deposition method,
wherein an off angle is provided to a surface of the
foundation substrate toward a crystal axis of [-1-1 2] direction
or its three-fold symmetric direction with respect to a crystal
plane orientation of (111);
wherein the off angle is in the range of 2 to 15°; and
wherein a deviation of the direction of the off angle is
within ±15°.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Keller et al. US 8,193,020 B2 June 5, 2012
Schreck et al. US 2013/0143022 A1 June 6, 2013

REJECTION
Claims 1, 7, 10, 13, 16, 19, and 20 are rejected under 35 U.S.C. § 103
as unpatentable over Schreck in view of Keller. Final Act. 3.
Appeal 2020-006520
Application 15/887,207

3
OPINION
The Examiner finds that Schreck discloses each of the elements of the
claimed invention, except that Schreck does not disclose the off angle is
provided towards a [-1 -1 2] direction or its three-fold symmetric direction
with respect to a crystal plane orientation with respect to (111):
Schreck et al[.] teaches a substrate for forming diamond thereon
comprising an off axis Ir/buffer/Si substrate, where in the angle
of the off axis is greater than 2° from the (001) or (111) surface
. . . . Schreck et al[.] also teaches the off axis direction was
[110] for the (001) plane . . . . Schreck et al[.] teaches greater
than 2° which explicit example of 4°.

(Final Act. 3–4, internal citations omitted). The Examiner finds that in a
method of heteroepitaxial growth, Keller teaches a silicon substrate with a
misorientation angle of 0.5 to 10° and a misorientation in the direction of
[-1 -1 2] (Final Act. 4). The Examiner determines that it would have been
obvious to modify Schreck’s substrate to have the off-angle in the [-1 -1 2]
direction “to produce a substrate having a desired off angle and direction
suitable for device manufacturing and step flow growth” (id.). The
Examiner also finds that the off-angle and the off-angle direction are result
effective variables and that optimization of such variables would have been
obvious (id.).
Appellant makes a number of arguments seeking reversal of the
rejection. We focus on the argument that it would not have been obvious to
modify Schreck to select the [-1 -1 2] direction recited in the claims and,
therefore, that the rejection is based on impermissible hindsight
reconstruction (Appeal Br. 12–13).
Appeal 2020-006520
Application 15/887,207

4
As noted by Appellant, when describing its process, Keller is explicit
that the direction of its off-angle is immaterial:
A method for growing an N-face group III nitride film in
accordance with the present invention comprises providing a
substrate having a growth surface with a misorientation angle
between 0.5 and 10 degrees in any direction relative to a miller
indexed crystallographic plane [h, i, k, l] of the substrate,
where h, i, k, l are miller indices.

(Keller 2:25–30, emphasis added). Keller further states: “Again, the
misorientation can be in any direction” (Keller 13:50). Thus, while some
examples in Keller do use the claimed direction, the preponderance of the
evidence of record does not support the Examiner’s determination that it
would have been obvious to select that direction to incorporate into
Schreck’s substrate.
With respect to the Examiner’s argument that the direction of the
off angle is a result effective variable, we agree with Appellant that the
Examiner has not adequately established that the direction of the off angle is
a result effective variable. The Examiner points to Paragraphs 30 and 31 to
as evidence that the direction of the off-angle is a result effective variable
(Ans. 9). However, for the reasons outlined at pages 12–13 of the Reply
Brief, Schreck’s paragraphs 30 and 31 do not teach that the off angle
direction produces any recognizable result. Accordingly, the off angle
direction cannot be said to be a result effective variable. See In re
Antonie, 559 F.2d 618, 621 (CCPA 1977) (An exception to the general rule
that optimization of a value is an obvious modification is where the
parameter optimized was not recognized to be a result effective variable).
Appeal 2020-006520
Application 15/887,207

5
Finally, because Schreck is directed towards the production of
diamond films, while Keller is directed to the production of Group III nitride
films, we agree with Appellant that a person of skill in the art would not
have had reason to believe that features in Keller providing good results for
production of Group III nitride films would translate to good results in
producing the diamond films of Schreck.
Accordingly, we reverse the rejection.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 7, 10, 13,
16, 19, 20
103 Schreck, Keller 1, 7, 10, 13,
16, 19, 20

REVERSED