Ex Parte Atwater et al

Patent Trial and Appeal Board

May 11, 2016

12928762 (P.T.A.B. May. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/928,762 12/17/2010
23363 7590 05/13/2016
Lewis Roca Rothgerber Christie LLP
POBOX29001
Glendale, CA 91209-9001
FIRST NAMED INVENTOR
Harry A. Atwater
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
66631/C766 2941
EXAMINER
LEE, EUGENE
ART UNIT PAPER NUMBER
2815
NOTIFICATION DATE DELIVERY MODE
05/13/2016 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):
pto@lrrc.com
pair_cph@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte HARRY A. ATWATER, MARINAS. LEITE,
EMILY C. W ARMANN, and DENNIS M. CALLAHAN
Appeal2014-008578
Application 12/928,762
Technology Center 2800
Before CATHERINE SHIANG, MONICA S. ULLAGADDI, and
MATTHEW J. McNEILL, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-7 and 22-25, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
Appeal2014-008578
Application 12/928,762
STATEMENT OF THE CASE
Introduction
The present invention relates to virtual substrates. See generally Spec.
1. Claim 1 is exemplary:
1. A substrate, comprising:
a handle support; and
a single crystalline layer on the handle support, wherein
the single crystalline layer is substantially elastically relaxed.
References and Rejections
Claims 1-6, 22, and 23 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Langdo (US 6,995,430 B2; Feb. 7, 2006).
Claims 1, 2, 6, and 22-25 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Nayfeh (US 7,495,313 B2; Feb. 24, 2009).
Claims 1-6 and 22-25 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Maleville (US 7,138,325 B2; Nov. 21, 2006).
Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Langdo and Hersee (US 6,596,377 Bl; July 22, 2003).
ANALYSIS
The Anticipation Rejections
The Rejection over Langdo
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejection, the Examiner's responses to Appellants' arguments,
and the evidence of record. We concur with Appellants' conclusion that the
Examiner erred in finding Langdo discloses "a single crystalline layer on the
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handle support, wherein the single crystalline layer is substantially
elastically relaxed," as recited in independent claim 1 (emphasis added).
Appellants argue:
Neither the present specification nor the cited Langdo reference
teaches or suggests that those of ordinary skill in the art would
have understood the term "relaxed," without the benefit of
Applicant's specification, to be equivalent to or interchangeable
with "elastically relaxed" outside the confines of the present
specification. Indeed, it is a "well-established axiom in patent
law that a patentee or applicant is free to be his or her own
lexicographer." . . . Here, Applicant has invoked this principle
in defining the term "relaxed" as interchangeable with
"elastically relaxed" for the limited purpose of describing
embodiments of the invention described in the instant
specification. In fact, as defined in the present specification,
the term "relaxed" is used as a shorthand reference of
"elastically relaxed."
... [A ]s those of ordinary skill in the art would readily
understand, the existence of a large volume of dislocations
would inherently prevent a layer from being elastically relaxed.
In particular, as is known in the art, relaxation can be plastic or
elastic in nature.
Applicant does not admit or ever concede that similar terms in a
reference outside the present application have the same
meaning. . . . Langdo describes a layer with a large volume of
dislocations, which those of ordinary skill in the art would
recognize as yielding a layer that is plastically relaxed, not
elastically relaxed as that term is understood by those of
ordinary skill in the art.
Reply Br. 2--4 (emphasis added); see also App. Br. 4-6.
The Examiner finds:
[I]t is well known to one of ordinary skill in the art that a layer
that is "relaxed" can also be termed congruously as
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Application 12/928,762
"substantially elastically relaxed". This is further supported by
the applicant's specification in paragraph [0043] that "relaxed"
and "elastically-relaxed" are used interchangeably and further
states where a film is referred to as "relaxed", the film is
"elastically relaxed".
Advisory Act. 2 (emphasis added).
The Langdo reference 6,995,430 B2 discloses (see, for
example, FIG. lB and column 4, lines 43-44) a substrate
comprising a film 16 wherein the film may be fully relaxed. It
would be understood to one of ordinary skill in the art that a
film that is fully relaxed would inherently have no strain; and
therefore, according to the appellant's specification, would be
substantially elastically relaxed. Because a substantially
elastically relaxed layer is a layer free of strain, and because
Langdo discloses a fully relaxed layer, known to be free of
strain, Langdo still reads on the appellant's claims.
Ans. 3 (emphasis added); see also Final Act. 3, 5.
Langdo's column 4, lines 43--44 states: "Relaxed layer 16 may be
fully relaxed .... " Further, the Specification portion cited by the Examiner
states:
the term "substantially relaxed" indicates that the material has
relaxed to a state in which there is no strain, or only a negligible
amount of strain. . . . Additionally, throughout the disclosure
and claims, the terms "relaxed" and "elastically-relaxed"
are used interchangeably, such that where a film is referred to
as "relaxed, " the film is "elastically-relaxed. "
Spec. iJ 43 (emphasis added).
We agree with Appellants that one skilled in the art would understand
a layer can be elastically relaxed or plastically relaxed. See Reply Br. 4.
Consistent with that understanding, we read paragraph 43 to mean that
"relaxed" is used as an abbreviation for "elastically relaxed" throughout the
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Specification. While paragraph 43 is ambiguously worded, we do not read
that paragraph to mean "elastically relaxed" is simply "relaxed," as asserted
by the Examiner.
We have reviewed the cited Langdo portions, and they do not disclose
"elastically" relaxed, as required by the claim. See Langdo, Fig. lB; 4:43-
44. Nor does the Examiner assert such disclosure exists.
Because the Examiner fails to provide sufficient evidence to support
the anticipation rejection, we are constrained by the record to reverse the
Examiner's rejection of claim 1, and claims 2-6, 22, and 23 for similar
reasons.
The Re} ection over N ayfeh
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejection, the Examiner's response to Appellants' arguments,
and the evidence of record. We concur with Appellants' conclusion that the
Examiner erred in finding N ayfeh discloses "a single crystalline layer on the
handle support, wherein the single crystalline layer is substantially
elastically relaxed," as recited in independent claim 1 (emphasis added).
Similar to the discussion above, the cited Nayfeh portion does not
disclose "elastically" relaxed. See Nayfeh 8: 1-2. Nor does the Examiner
assert such disclosure exists.
Because the Examiner fails to provide sufficient evidence to support
the anticipation rejection, we are constrained by the record to reverse the
Examiner's rejection of claim 1, and claims 2, 6, and 22-25 for similar
reasons.
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The Rejection over Maleville
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejection, the Examiner's responses to Appellants' arguments
and the evidence of record. We concur with Appellants' conclusion that the
Examiner erred in finding Maleville discloses "a single crystalline layer on
the handle support, wherein the single crystalline layer is substantially
elastically relaxed," as recited in independent claim 1 (emphasis added).
Similar to the discussion above, the cited Maleville portion does not
disclose "elastically" relaxed. See Maleville 7:36-38. Nor does the
Examiner assert such disclosure exists.
Because the Examiner fails to provide sufficient evidence to support
the anticipation rejection, we are constrained by the record to reverse the
Examiner's rejection of claim 1, and claims 2-6, and 22-25 for similar
reasons.
The Obviousness Rejection
The Examiner cites Langdo and Hersee for the obviousness rejection
of claim 7. The Examiner relies on Langdo in the same manner discussed
above in the context of claim 1, and does not rely on Hersee in any manner
that remedies the deficiencies of the underlying anticipation rejection. See
Final Act. 4.
Accordingly, we reverse the Examiner's obviousness rejection of
claim 7.
DECISION
We reverse the Examiner's decision (1) rejecting claims 1-6, 22, and
23 under U.S.C. § 102 as being anticipated by Langdo; (2) rejecting claims
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1, 2, 6, and 22-25 under U.S.C. § 102 as being anticipated by Nayfeh; (3)
rejecting claims 1-6 and 22-25 under U.S.C. § 102 as being anticipated by
Maleville; and (4) rejecting claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Langdo and Maleville.
REVERSED
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