Ex Parte an et al

Patent Trial and Appeal Board

Dec 27, 2016

12879578 (P.T.A.B. Dec. 27, 2016)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/879,578 09/10/2010 CHONG Pyung An SP10-203 7261
22928 7590 12/29/2016
TORNTNO TNmRPORATFD
EXAMINER
SP-TI-3-1 AUER, LAURA A
CORNING, NY 14831
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
12/29/2016 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):
u sdocket @ corning .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHONG PYUNG AN and MARK ALEJANDRO QUESDA
Appeal 2015-006547
Application 12/879,578
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and
MICHAEL G. McMANUS, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-006547
Application 12/879,578
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1 and 3-13. We have jurisdiction over the appeal pursuant to 35 U.S.C. §
6(b).
We AFFIRM.
Appellants’ invention is directed to hermetic barrier layers that are
self-passivating, inorganic, and mechanically stable hermetic thin films
(Spec. 12).
Claim 1 is illustrative:
1. A hermetic thin film, comprising:
a first inorganic layer having an initial thickness formed over a
substrate; and a second inorganic layer contiguous with the first inorganic
layer; wherein
the first inorganic layer is amorphous;
the second inorganic layer consists essentially of an oxidation and/or
hydrolysis reaction product of the first inorganic layer;
a molar volume of the second inorganic layer is from about -1% to
15% greater than a molar volume of the first inorganic layer; and
an equilibrium thickness of the second inorganic layer is at least 10%
of but less
than the initial thickness of the first inorganic layer.
Appellants appeal the following rejections:
1. Claims 1, 3, and 7-12 are rejected under 35 U.S.C. § 102(b) as
unpatentable over Aitken (US 2007/0252526 Al, pub. Nov. 1, 2007).
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Application 12/879,578
2. Claims 4-6 and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Aitken in view of Zimmerman (US 2008/0305355
Al, pub. Dec. 11, 2008).
With regard to rejection (1), Appellants’ arguments focus on claims 1, 9,
and 10 only (App. Br. 5-10). Appellants’ arguments regarding claims 4-6
under rejection (2) are the same arguments made with regard to rejection (1)
(App. Br. 11). Accordingly, claims 3-12 will stand or fall with our analysis
of the rejection of claim 1. Claim 13 under rejection (2) is argued separately
(App Br. 11-12).
FINDINGS OF FACT & ANALYSIS
REJECTION (1): § 102(b)
Claim 1
The Examiner finds that Aitken teaches the subject matter of claim 1
with the requirement that the second layer is contiguous with the first
inorganic layer, the range of molar volume of the second inorganic layer,
and the thickness of the first inorganic layer being at least 10% being
inherent properties of Aitken’s product (Final Act. 2-3). The Examiner finds
that Aitken uses the same sealing material (tin fluorophosphate) and a
similar process as Appellants’ material and process, respectively, where the
sealing material is exposed to air (Final Act. 3; Ans. 4-5). The Examiner
finds that Aitken discloses cooling the device to be coated, applying a
coating over the device and then heat-treating the device at a temperature
and environment that does not damage the inner layers of device (Ans. 3-4,
Fig. 2). The Examiner finds that Aitken’s heat-treatment step may be
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Application 12/879,578
carried out in a vacuum “if desired” (Ans. 4). The Examiner finds that
Aitken’s teaching that a vacuum or oxygen-free environment may be used
“if desired” means that ambient air or other environment may be used during
the heat-treatment step (Ans. 4). The Examiner finds that when the
deposited coating, which is the same material disclosed by Appellants as a
suitable coating (tin fluorophosphate), is exposed to air, the coating would
react with the oxygen in the air and form an oxidized layer on the coating
which has the same properties as claimed by Appellants (Ans. 4-5).
Appellants argue that Aitken’s process that uses a heat-treatment step
is different than Appellants’ method of forming the hermetic thin film where
no heat treatment step is used (App. Br. 7). Appellants argue that Aitken
uses a heat-treatment step which is performed in an inert atmosphere or
vacuum to help ensure that a water and oxygen-free condition is maintained
throughout the entire sealing process. (App. Br. 7). Regarding claims 1, 9,
and 10, Appellants argue that Figure 4 of Aitken and the discussion of
Figure 4 in 136 evince that a suitable oxidation profile of the hermetic seals
(i.e., 100c in Fig. 4) has a low oxidation profile (less than 10% oxidation) for
over 1000 hours in the accelerated-aging test (App. Br. 7). Appellants
contend that during the heat-treatment the layer is consolidated so that the
pores in the layer are removed and the layer has improved resistance to
oxidation (App. Br. 8). Appellants argue that the heat-treated layer would
result in a film that has a limited capacity for oxidation (App. Br. 8).
Appellants argue that in light of these arguments the Examiner has not
established that Aitken’s hermetic sealing layer has the properties recited in
the claim. Id. Appellants argue that Aitken’s “if desired” language in 121
does not disclose that the heat-treatment step is optional (Reply Br. 5).
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Appeal 2015-006547
Application 12/879,578
Appellants’ arguments are not persuasive because they fail to show
reversible error with the Examiner’s stated rejection. The Examiner finds
that Aitken teaches that the use of an inert gas or a vacuum during the heat-
treatment is optional (“if desired”), not that the heat-treatment step is
optional (Ans. 4). In other words, the Examiner finds that Aitken teaches
that the heat-treatment could be performed in other environments including
ambient air. Id. Appellants do not specifically contest this finding of the
Examiner with regard to Aitken’s 121 disclosure. The Examiner reasonably
establishes that performing Aitken’s heat-treatment in air would have
reasonably been expected to form an oxide layer on the tin fluorophosphate
layer. Indeed, Appellants teach that the reaction of tin fluorophosphate and
oxygen spontaneously occurs (Spec. Tflf 16, 35). Appellants further disclose
that oxidation of the inorganic coating layer may occur by exposing the
coating to “steam” (Spec. 121). Steam is vapor from water heated above its
boiling point (i.e., 100°C). In other words, Appellants own disclosure may
use an elevated temperature to react the oxygen containing environment and
inorganic layer.
Appellants’ arguments regarding Aitken’s Figure 4 as applied to
claims 1, 9, and 10 are not accurate. The Examiner finds that Aitken’s
Figure 4 shows the oxidation of the calcium test patch that is sealed
underneath the hermetic coating (Aitken H 35, 36; Ans. 6). Accordingly,
the 10% oxidation shown in Figure 4 with respect to sample 100c refers to
oxidation of the underlying calcium patch, not oxidation of the tin
fluorophosphate film coating the patch.
Appellants argue that the Examiner has improperly read limitations
regarding the inorganic coating material into the claims (App. Br. 9).
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Application 12/879,578
Appellants contend that claim 1 is not limited to any particular inorganic
material and the Examiner cherry-picked the tin fluorophosphate material
from the list of materials. Id. Therefore, Appellants contend that the
Examiner has not established that claimed properties are necessarily present
in Aitken’s hermetic film. Id.
The Examiner has not read limitations into the claims. Rather, the
Examiner construed the claim phrase “inorganic layer” in claim 1 as
including Appellants’ disclosed tin fluorophosphate (Final Act. 3). In other
words, the claim is not limited to any particular inorganic layer material and
the Examiner finds that Aitken’s teaching to use tin fluorophosphate satisfies
properly construed claim 1.
REJECTION (2): § 103 Claim 13
Appellants argue that the Examiner relied on Zimmerman’s hermetic
copper oxide material as inherently having the molar volume and thickness
properties (App. Br. 11-12). Appellants argue that Zimmerman’s process is
completely different than Appellants’ process used to form the hermetic thin
film. Id. Appellants argue that Zimmerman’s cupric oxide layer is
crystalline and does not teach or suggest a hermetic thin film having an
amorphous first inorganic layer (App. Br. 12).
Appellants’ arguments are unpersuasive because they fail to address
the Examiner’s stated rejection. The Examiner finds that Aitken teaches the
general process for forming a hermetic thin film, but fails to teach the
inorganic layer is an oxide of copper (Final Act. 5-6). The Examiner finds
that Zimmerman teaches that an oxide of copper is a known hermetic layer
(Final Act. 6). The Examiner finds that Zimmerman and Aitken teach
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material sufficient for forming a hermetic seal (Ans. 6). The Examiner
concludes that it would have been obvious to use Zimmerman’s copper
oxide as the inorganic material in Aitken’s hermetically sealed device as an
alternative inorganic, hermetically sealing material (Final Act. 7; Ans. 6).
The Examiner is not proposing to bodily incorporate Zimmerman’s
process of treating the copper oxide material to form a hermetic seal to form
Aitken’s hermetically sealed device. Instead the Examiner is proposing to
substitute Zimmerman’s copper oxide inorganic material as the hermetic
sealing material in Aitken’s device. In other words, Zimmerman’s copper
oxide would have been used in Aitken’s process for forming the hermetic
sealing layer. As noted above in our discussion of Aitken under the § 102
rejection, we find that the Examiner has put forth enough evidence that using
Aitken’s process, as modified by Zimmerman, to form the inorganic layers
would have inherently resulted in a layer having the properties recited in the
claims.
On this record, we affirm the Examiner’s § 102 rejection over Aitken
and § 103 rejection over Aitken in view of Zimmerman.
DECISION
The Examiner’s decision 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)(1).
ORDER
AFFIRMED
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