Brice Dubost et al.Download PDFPatent Trials and Appeals BoardDec 2, 201914761749 - (D) (P.T.A.B. Dec. 2, 2019) Copy Citation 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. 14/761,749 07/17/2015 Brice DUBOST 455963US99PCT 2179 22850 7590 12/02/2019 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER MCCLURE, CHRISTINA D ART UNIT PAPER NUMBER 1718 NOTIFICATION DATE DELIVERY MODE 12/02/2019 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): OBLONPAT@OBLON.COM iahmadi@oblon.com patentdocket@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BRICE DUBOST, EMMANUEL MIMOUN, and MATTHIEU BILAINE ____________ Appeal 2018-008157 Application 14/761,749 Technology Center 1700 ____________ Before DONNA M. PRAISS, LILAN REN, and JANE E. INGLESE, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision2 Non-Finally rejecting claims 1, 3, 4, 6–13 and 16. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Saint-Gobain Glass France is identified as the real party in interest. Appeal Brief, filed February 9, 2018 (“Appeal Br.”) 2. 2 Non-Final Office Action, dated October 11, 2017 (“Non-Final Act.”). Appeal 2018-008157 Application 14/761,749 2 STATEMENT OF THE CASE Background The subject matter on appeal relates to a process for heat treating substrates provided with coatings. Specification, July 17, 2015 (“Spec.”) 1:3–4. According to the Specification, “controlling the heat treatment as a function of the characteristics of the [coating] layer makes it possible to render the process more flexible and/or to increase the homogeneity of the coating after treatment.” Id. at 2:22–25. The Specification discloses an embodiment in which two heating means can be controlled independently from one another with each treating a different zone of the coating. The embodiment further provides that the conditions of the heating treatment of each zone are adapted as a function of at least one measured property of the coating, which measurement is carried out on the running substrate. Id. at 1:22–32. Of the appealed claims, claim 1 is the sole independent claim. Claim 1 is representative of the subject matter on appeal, and reproduced below (disputed limitations italicized): 1. A process, comprising: depositing a coating on at least one side of a substrate, to obtain a coated substrate; and heat treating said coating with at least two heaters that can be controlled independently one from another and that are situated opposite to a running direction of the coated substrate, wherein: each heater treats a different zone of said coating; prior to the heat treating, and for each of the different zones, at least one measurement of at least one property of said coating is carried out on the coated substrate opposite to the running Appeal 2018-008157 Application 14/761,749 3 direction, and the conditions of the heat treating of each zone are adapted as a function of the at least one measurement obtained before the heat treating of each of the different zones; and the at least one property of said coating measured prior to the heat treating is selected from the group consisting of an optical property and an electrical property. Appeal Br. i (Claims Appendix). The Examiner maintains the following rejections over the following references on appeal. Ans. 2–16; Non-Final Act. 4–17. The References Name Reference Date Sun US 2008/0293166 A1 Nov. 27, 2008 Matsuzaki US 2009/0139860 A1 June 4, 2009 Shah US 2010/0024865 A1 Feb. 4, 2010 Nadaud US 2010/0071810 A1 Mar. 25, 2010 Haishi US 2012/0111718 A1 May 10, 2012 The Rejections Claim(s) 35 U.S.C. § Reference(s) 1, 3, 4, 6, 8–13, 16 103(a) Nadaud, Shah, Sun, Matsuzaki 7 103(a) Nadaud, Shah, Sun, Matsuzaki, Haishi OPINION After considering the evidence presented in this Appeal and each of Appellant’s contentions, we are not persuaded the Examiner erred harmfully. Appellant argues the rejection of claim 1 and relies on the same arguments for claims 3, 4, 6–13 and 16, which depend from claim 1. Appeal Appeal 2018-008157 Application 14/761,749 4 Br. 4–20. Accordingly, and based upon the lack of arguments directed to the subsidiary rejection of claim 7, claims 3, 4, 6–13 and 16 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). Appellant asserts that the Examiner erred harmfully in rejecting claim 1 over the cited references because (1) the Examiner’s combination relies upon Appellant’s Specification, (2) the combination of Nadaud and Shah would result in the heat treatment of the same area twice, (3) Nadaud would not have been expected to have the thickness variations observed in Sun, (4) Shah’s use of uniform laser power to avoid inhomogeneous crystallization implies no inhomogeneity, and (4) Matsuzaki teaches Nadaud’s sputtering technique provides excellent in-plane uniformity. Appeal Br. 6–20. Appellant contends that the Examiner’s further reliance on Haishi for the rejection of claim 7 does not remedy the deficiencies of Nadaud, Shah, Sun, and Matsuzaki. Id. at 20. The Examiner responds that Sun suggests measuring a characteristic over a substrate for improved processing and Matsuzaki teaches that film thickness varies over the surface of a sputter deposited film, therefore, since Nadaud teaches depositing films by sputtering and that heat treatment depends on factors such as film thickness, the prior art suggests measuring the film thickness across the substrate and optimizing laser processing by measuring characteristics of the coating for more consistent processing. Ans. 17. The Examiner finds that Nadaud discloses multiple heaters and the regions heated by lasers are considered the heating zones. Id. at 18–19. The Examiner finds that measuring a property of the coating prior to heating and adapting the conditions of the heating as a function of the measurement obtained is provided by the combination of Nadaud with Shah, Sun, and Appeal 2018-008157 Application 14/761,749 5 Matsuzaki and not from the combination of Nadaud and Shah alone. Id. at 19. Regarding the combination of Nadaud and Shah treating the same area twice, the Examiner finds that Shah teaches multiple moveable lasers which provides the benefits of (1) treating a larger region with fewer lasers compared to multiple fixed lasers and (2) improving the efficiency over a single laser by treating all zones simultaneously. Id. at 19–20. The Examiner also finds that it is Nadaud’s lasers that are arranged perpendicular to the substrate running direction and capable of moving as a line to simultaneously irradiate and entire substrate width, while Shah teaches two separate lasers with their own moving devices to scan over the substrate surface. Id. at 21–24 (citing Shah ¶ 99, Fig. 7). The Examiner finds that the combination of Shah with Nadaud provides the benefit of speeding up the process with more than one laser scanned over the surface and smaller regions to treat, as opposed to Nadaud’s one laser treating the entire surface. Id. at 22, 28. The Examiner also finds that Shah adapts the heating location according to the film thickness while Nadaud adapts the heating parameters according to film characteristics, therefore the combination would not be expected to provide inhomogeneous crystallization because the process optimizes the crystallization across the substrate. Id. at 27. The Examiner acknowledges that Shah teaches inhomogeneous crystallization results from using lasers of different power densities, but notes that inhomogeneous crystallization would also result if the same heat treatment were applied uniformly over a surface with varied film thickness. Id. at 30. Because Nadaud discloses the heating parameters are based on film thickness, changing the heating conditions depending on film thickness Appeal 2018-008157 Application 14/761,749 6 would be expected to provide acceptable results in the process of Nadaud. Id. Regarding Matsuzaki suggesting Nadaud’s film thickness is uniform, the Examiner finds Matsuzaki’s method improves film thickness by sputter, but still results in variation over the surface of the substrate. Id. at 31 (citing Matsuzaki Table 5). Regarding two distinct measurements of the sputter deposited film for adapting heating based on the measurements, the Examiner finds Nadaud teaches heat treatment depends on film properties such as thickness, Matsuzaki indicates that film thickness varies over the surface of a sputter deposited film like Nadaud’s, Sun provides the suggestion of measuring a characteristic over a substrate for improved processing, and that it would have been obvious to a person having ordinary skill in the art to duplicate the measurement in the heated zones. Id. at 24–26 (citing Nadaud ¶ 39). We are not persuaded by Appellant’s arguments that the Examiner erred in rejecting claim 1. The preponderance of the evidence cited in this Appeal record supports the Examiner’s combination of the cited prior art references. Although Appellant correctly points out (Appeal Br. 18) that Matsuzaki discloses a method that produces “superior in-plane uniformity” of the film thickness, Appellant does not dispute the Examiner’s finding (Ans. 31; Non-Final Act. 10) that Matsuzaki nevertheless discloses variation in the film thickness measurements. The record supports the Examiner’s finding. Matsuzaki, Table 5. Moreover, the Examiner finds that Nadaud discloses a relationship between film thickness and heat treatment parameters (Ans. 17; Non-Final Act. 4) which Appellant does not dispute. The record supports the Examiner’s finding. Nadaud ¶ 39. Appeal 2018-008157 Application 14/761,749 7 Nadaud also discloses coating the substrate before heat treating, lasers arranged perpendicular to the substrate running direction and capable of moving as a line to simultaneously irradiate an entire substrate width, and heating regions or zones heated by the lasers. Ans. 19, 21–22, 24; Nadaud ¶¶ 18, 23, 50. Appellant’s argument (Appeal Br. 7–11) that combining Nadaud with Shah’s teaching to use two separate lasers with their own moving devices to scan over a substrate surface would also change Nadaud’s coating procedure and laser arrangement is not persuasive of error because it seeks to bodily incorporate additional aspects of Shah’s procedure into Nadaud’s method. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). Appellant’s argument (Appeal Br. 11–15) that Shah does not teach two separate measurements prior to the application of the lasers or any reason to conduct independent measurements is not persuasive of error because it does not address the rejection made by the Examiner. The Examiner does not rely on Shah for teaching such measurements, but rather Sun’s teaching to measure a characteristic over a substrate for improved processing together with Nadaud’s teaching that heat treatment is dependent Appeal 2018-008157 Application 14/761,749 8 on film properties such as film thickness. Ans. 24–25; Sun ¶ 30; Nadaud ¶ 39. In the context of Nadaud’s heating zones, the Examiner reasonably determines that it would have been obvious to apply Sun’s teaching to each of Nadaud’s zones. Id. at 26. Appellant’s argument (Appeal Br. 15–17) that Sun’s teachings are limited to measuring a layer stack with “major thickness variation” and Nadaud does not include such films is not persuasive of error because in a determination of obviousness, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious.”). As discussed above, Nadaud discloses that film thickness is a property that relates to heat treatment conditions and film thickness variation from sputtering techniques is evidenced by Matsuzuki. Therefore, the Examiner did not err in combining Sun’s teachings to optimize homogeneous film thickness in Nadaud’s method. Accordingly, for these reasons and those the Examiner provides, we affirm the Examiner’s rejection of claims 1, 3, 4, 6–13 and 16 under § 103(a) over the cited prior art references. CONCLUSION The Examiner’s rejections of claims 1, 3, 4, 6–13 and 16 under 35 U.S.C. § 103(a) is affirmed. Appeal 2018-008157 Application 14/761,749 9 In summary: Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1, 3, 4, 6, 8– 13, 16 103(a) Nadaud, Shah, Sun, Matsuzaki 1, 3, 4, 6, 8–13, 16 7 103(a) Nadaud, Shah, Sun, Matsuzaki, Haishi 7 Outcome 1, 3, 4, 6–13, 16 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation