Ex Parte Craven et al

Patent Trial and Appeal Board

Sep 25, 2013

10413691 (P.T.A.B. Sep. 25, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/413,691 04/15/2003 Michael D. Craven G&C 30794.100-US-U1 2149
22462 7590 09/26/2013
GATES & COOPER LLP (General)
HOWARD HUGHES CENTER
6701 CENTER DRIVE WEST, SUITE 1050
LOS ANGELES, CA 90045
EXAMINER
SONG, MATTHEW J
ART UNIT PAPER NUMBER
1714
MAIL DATE DELIVERY MODE
09/26/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte MICHAEL D. CRAVEN and JAMES STEPHEN SPECK
______________

Appeal 2012-002159
Application 10/413,691
Technology Center 1700
_______________

Before ADRIENE LEPIANE HANLON, CHARLES F. WARREN and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1-14, 34, 38, 39, 42 and 43, requesting
review of the grounds of rejection under 35 U.S.C. § 103(a): claims 1-4,
6-14, 38, 39 and 43 over Appellants’ admitted prior art (Spec. 2-4 (APA)),
Lee (US 2001/0011935 A1) and Marchand (US 2002/0020341 A1), claim 42
over APA, Lee, Marchand and Flynn (US 6,447,604 B1), and claims 5 and
34 over APA, Lee, Marchand and Amano;1 and under the judicially created
doctrine of obviousness-type double patenting: claims 1-14 and 43 over

1 H. Amano, N. Sawaki, I. Akasaki and Y. Toyoda, Metalorganic vapor
phase epitaxial growth of a high quality CaN film using an AlN buffer layer,
Appl. Phys. Lett. 48 (5), 353-355 (February 3, 1986).
Appeal 2012-002159
Application 10/413,691
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claims 1-19 of Chakraborty (US 7,186,302 B1) and Marchand, and claims
1-14, 34, 38, 39, 42 and 43 over claims 1-9 of Craven (US 7,091,514 B1)
and Marchand. App. Br. 7; Ans. 4, 9.2 We have jurisdiction. 35 U.S.C.
§§ 6 and 134(a) (2002).
We affirm the decision of the Primary Examiner.
Claim 1, the sole independent claim, illustrates Appellants’ invention
of a method of growing a non-polar gallium nitride (GaN) thin film on a
substrate through metalorganic chemical vapor deposition (MOCVD), and is
representative of the claims on appeal:
1. A method of growing a non-polar gallium nitride thin film on a
substrate through metalorganic chemical vapor deposition comprising:
(a) depositing a nitride-based layer on the substrate; and
(b) growing the non-polar gallium nitride film on the nitride-based
layer through the metalorganic chemical vapor deposition,
(c) wherein the non-polar gallium nitride film resulting from steps (a)
and (b) has a planar growth surface with a stacking fault density of no more
than 3.8 x 105 cm-1 and a threading dislocation density of no more than
2.6 x 1010 cm-2, and is suitable for subsequent growth of device-quality
(Al,B,In,Ga)N layers.
App. Br. 25 (Claims App’x).
Appellants argue the grounds of rejection under § 103(a) on claims 1,
7, 13 and 39. App. Br. 8, 21-23. Appellants do not argue the grounds of
rejection under the judicially created doctrine of obviousness-type double
patenting. App. Br. 23. Thus, we decide this appeal based on claim 1 and
on claims 7, 13 and 39 to the extent argued in the Briefs. 37 C.F.R.

2 The Examiner has not withdrawn the grounds of rejection under the
judicially created doctrine of obviousness-type double patenting set forth at
pages 9-11 of the Final Office Action mailed January 4, 2011 (Final Office
Action). See generally Ans.
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§ 41.37(c)(1)(vii).
We have not considered the arguments based in whole or in part on
Sasaki3 and Amano raised for the first time in the Reply Brief at pages
3-7 and 10-15, because Appellants have not explained why the contentions
which could have been raised in the Appeal Brief were not raised therein.
37 C.F.R. § 41.37(c)(1)(vii) (second sentence); see also In re Hyatt, 211
F.3d 1367, 1373 (Fed. Cir. 2000) (an argument not first raised in the brief to
the Board is waived on appeal); cf. Ex parte Borden, 93 USPQ2d 1473, 1477
(BPAI 2010) (non-precedential) (“Properly interpreted, the Rules do not
require the Board to take up a belated argument that has not been addressed
by the Examiner, absent a showing of good cause.”).
OPINION
We determine that the language of claim 1, consistent with the
Specification as it would be interpreted by one of ordinary skill in the art,
specifies a method of growing a non-polar GaN thin film on any substrate
through MOCVD, wherein a step of depositing any nitride-based layer on
the substrate precedes a step of growing a non-polar GaN thin film through
MOCVD such that the resulting GaN thin film has the specified planar
growth surface with stacking fault density and threading dislocation density
defects in the specified ranges. See, e.g., In re Suitco Surface, Inc., 603 F.3d
1255, 1259-60 (Fed. Cir. 2010); In re Translogic Tech. Inc.,
504 F.3d 1249, 1256 (Fed. Cir. 2007); In re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Morris, 127 F.3d 1048, 1054-55
(Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).

3 T. Sasaki and S. Zembutsu, J. Appl. Phys. 61, 2533 (1987). Spec. 10:28.
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According to Appellants, “[t]he present invention describes a method for
growing device quality non-polar (1120) a-plane GaN thin film via MOCVD
on (1102) r-plane sapphire substrates.” Spec. 5:9-10. While the method
steps specified in claim 1 are limited only by the properties of the non-polar
GaN thin film produced, Appellants disclose that “[t]he method employs a
low-temperature buffer layer grown at atmospheric pressure to initiate the
GaN growth on r-plane sapphire” followed by “a high temperature growth
step [] performed at low pressures . . . to produce a planar film.” Spec.
5:10-13: see also 5:14 to 7:4, Fig. 1. We do not find in the Specification any
disclosure which limits the broad claim terms, or any language in claim 1 or
in the Specification which requires that claim 1 is limited to any
embodiment(s) disclosed in the Specification. See, e.g., Phillips v. AWH
Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)(en banc); In re Van Geuns,
988 F.2d 1181, 1184-85 (Fed. Cir. 1993); Zletz, 893 F.2d at 321-22 (citing
In re Prater, 415 F.2d 1393).
The Examiner relies on Appellants’ admission of prior art:
A potential means of eliminating the effects of . . . polarization-
induced fields is through the growth of structures in directions
perpendicular to the GaN c-axis (non-polar) direction. . . .
Growth of a-plane nitride semiconductors also provides a
means of eliminating polarization-induced electric field effects
in wurtzite nitride quantum structures. For example in the prior
art, a-plane GaN growth had been achieved on r-plane sapphire
via MOCVD and molecular beam epitaxy (MBE). . . .
However, the film growth reported by these early efforts did not
utilize a low temperature buffer layer and did not possess
smooth planar surfaces, and therefore, these layers were poorly
suited for heterostructure growth and analysis. . . . .
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APA (Spec. 3:19-30). Ans. 4.4
The Examiner finds the APA acknowledges that non-polar a-plane
GaN thin film had been grown on r-plane sapphire using MOCVD without
utilizing a low temperature buffer layer, which did not have smooth planar
surfaces. The Examiner determines that one of ordinary skill in the art
would have modified the acknowledged method of growing non-polar a-
plane GaN thin film on r-plane sapphire via MOCVD by first depositing a
GaN buffer layer on the r-plane sapphire and then growing smooth-surfaced,
non-polar a-plane GaN thin film on the GaN buffer layer via MOCVD, as
taught by Lee. The Examiner further determines that the combination of
APA, Lee and Marchand would have led one of ordinary skill in the art to
reasonably expect that minimizing the lattice mismatch between non-polar
a-plane GaN thin film and the r-plane sapphire substrate would improve the
smoothness of the non-polar a-plane GaN thin film as taught by Lee and
Marchand, reduce threading dislocation density defects as taught by
Marchand, and reduce planar growth surface stacking fault densities by
growing the non-polar a-plane GaN thin film following the combined
teachings of APA, Lee and Marchand. Ans. 4-7, 10-14 (citing APA; Lee
¶¶ 0038-0048, 0059, 0063, 0065-0067; Marchand ¶¶ 0008-0010).
We cannot agree with Appellants that the Examiner erred in
determining that the combination of APA, Lee and Marchand would have
led one of ordinary skill in the art to a method of depositing a layer of GaN
as a conventionally known buffer layer on r-plane sapphire, and then
growing on the buffer layer a non-polar a-plane GaN thin film, via MOCVD,

4 The Examiner does not rely on any of “Reference 8” and “References
9-15” cited by Appellants. Spec. 3:23, 3:27, 10:26 to 11:7.
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which has a planar surface and stacking fault density and threading
dislocation density defects in ranges such that the method of forming the
non-polar a-plane GaN thin film on r-plane sapphire falls within claim 1.
Ans. 10-11; App. Br. 11-21; Reply Br. 2-3, 7-10.
Appellants acknowledge the APA describes that the formation of non-
polar a-plane GaN thin film on r-plane sapphire without a nitride-based layer
results in a thin film that does not have a planar growth surface and has
stacking fault density and threading dislocation density defects. App. Br. 12
(quoting Spec. 3:19 to 4:2). Appellants contend Lee teaches away from non-
polar growth in describing “using a buffer layer to grow c-plane polar GaN,
not non-polar GaN,” and in stating “that if the crystal had not been grown in
the [0001] c-axis direction (e.g., in a non-polar direction) then the crystal
quality would not have been adequate,” thus describing “that crystal quality
of non-c-axis grown GaN is inadequate.” App. Br. 14 (quoting Lee
¶¶ 0038-0040, 0063 (emphasis supplied by Appellants)); Reply Br. 7-8.
Appellants further contend that while Marchand discloses “lattice mismatch
between the substrate and GaN causes defects such as extended [threading]
dislocations and stacking faults,” Marchand’s description of threading
dislocation density obtained by growing GaN on, among other things,
sapphire using “buffer layers such as AlN or low-temperature GaN,” is with
respect to the “growth of c-plane polar GaN, not non-polar GaN” as claimed.
App. Br. 14-16 (quoting Marchand ¶¶ 0008-0010).
Appellants contend that “[c]-plane polar (0001) GaN (as described in
Lee and Marchand) and non-polar GaN ([as claimed]) are different
compositions . . . hav[ing] different crystallographic orientations, different
atomic configuration for binding with subsequent device layers, and
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consequently different properties.” App. Br. 16-18 (quoting Haskell 3:3 to
4:195). Appellants point out that “portions of Haskell describe how the
growth surface of a c-plane polar GaN film contains either predominantly
[Ga] atoms or predominately [N] atoms,” and that “the growth surface of
non-polar GaN comprises substantially equal numbers of [N] and [Ga]
atoms.” App. Br. 180 (original emphasis deleted). Appellants contend that
“it is much easier to grow c-plane polar (0001) GaN, because each plane is
deposited by depositing one kind of atom ([Ga] or [N]) . . . [and not] by
depositing two kinds of atoms ([Ga] and [N]) in the same plane.” App. Br.
18. Thus, Appellants argue that one of ordinary skill in the art would not
have been led by Lee and Marchand, which deposit c-planar polar (0001)
GaN film on a buffer layer, to deposit non-polar GaN film on a buffer layer
with Marchand’s threading dislocation density. App. Br. 19.
Appellants contend that it would not have been obvious to have used
MOCVD to deposit non-polar GaN since this process “includes additional
complexity []compared to MBE.” App. Br. 19-20. Appellants further
contend that Iwata6 used a low temperature layer which prevented large facet
features previously reported but found “differences in surface structure
between GaN grown on C-, A-, R- and M-plane sapphire remained . . . due
to the growth on r-plane sapphire containing non-polar a-plane orientations
and therefore worse surface morphology.” App. Br. 21 (quoting Iwata
L 662 to L 663). Reply Br. 8-10 (quoting Iwata L 662 to L 663). Thus,

5 WO 2004/061969 A1. See App. Br. 17.
6 Kakuya Iwata, Hajime Asahi, Kumiko Asami, Reiko Kuroiwa and Shun-
ichi Ginda, Gas Source Molecular Beam Epitaxy Growth of GaN on C-, A-,
R- and M-Plane Sapphire and Silica Glass Substrates, Jpn. J. Appl. Phys.
Vol. 36 (1997) pp. L 661-664. See App. Br. 20.
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Appellants argue that Iwata evidences that growing non-polar GaN using a
buffer layer is not a matter of routine experimentation. App. Br. 21.
On this record, we are not persuaded of error in the Examiner’s
position with respect to claim 1. We find that, as the Examiner maintains,
the APA acknowledges that it was known in the art that growing a non-polar
a-plane GaN thin film on r-plane sapphire via MOCVD without a buffer
layer did not obtain a non-polar a-plane GaN thin film which had smooth
planar surfaces. Thus, we are of the opinion that one of ordinary skill in the
art would have been motivated to use methods known in the art to obtain a
non-polar a-plane GaN thin film on r-plane sapphire via MOCVD which has
smooth planar surfaces. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 402-03 (2007) (“When there is a design need or market pressure to
solve a problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill in the art has good reason to pursue the
known options within his or her technical grasp. If this leads to the
anticipated success, it is likely the product not of innovation but of ordinary
skill and common sense.”); In re Nomiya, 509 F.2d 566, 572 (CCPA 1975)
(“The significance of evidence that a problem was known in the prior art is,
of course, that knowledge of a problem provides a reason or motivation for
workers in the art to apply their skill to its solution.”).
We agree with the Examiner’s finding that each of Lee and Marchand
would have disclosed to one of ordinary skill in the art that depositing a low
temperature GaN buffer layer on a sapphire substrate will reduce the known
lattice constant mismatch between GaN thin film and a sapphire substrate
that, as described in Marchand, were known to “cause[] extended defects
such as dislocation and stacking faults to be generated at the interface
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between the substrate and the GaN layer as well as into the GaN layer
itself.” Marchand ¶ 0008; see also Lee ¶¶ 0041, 0043; Marchand ¶ 0010.
Thus, we are of the view that, as the Examiner determines, one of ordinary
skill in the art routinely following the combination of APA, Lee and
Marchand would have reasonably arrived at modifying the known process of
growing a non-polar a-plane GaN thin film on r-plane sapphire via MOCVD
without a buffer layer, by first depositing a low temperature GaN buffer
layer on the r-plane sapphire substrate in the reasonable expectation of
reducing the known lattice constant mismatch between GaN thin film and
sapphire substrate, thus obtaining a non-polar a-plane GaN thin film on r-
plane sapphire which has reduced threading dislocation density and stacking
fault density, without resort to Appellants’ Specification. See, e.g., KSR,
550 U.S. at 402; In re Kahn, 441 F.3d 977, 985-88 (Fed. Cir. 2006); In re
Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of
one of ordinary skill in the art); In re Keller, 642 F.2d 413, 425 (CCPA
1981) (“The test for obviousness is . . . . what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”); see
also, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007)
("the expectation of success need only be reasonable, not absolute"); In re
O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For obviousness under
§ 103, all that is required is a reasonable expectation of success.” (citations
omitted)).
We are not persuaded otherwise by Appellants’ technical contentions
and evidence explaining the difference between polar and non-polar GaN
thin film grown on sapphire substrates via MOCVD and MBE, and between
the GaN film grown on substrates in the preferred embodiments of Lee and
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Marchand, and the non-polar a-plane GaN thin film grown on r-plane
sapphire via MOCVD known in the art as established by APA. Indeed, we
find that Appellants’ technical contentions and evidence fail to establish that
one of ordinary skill in the art would have concluded from the combination
of APA, Lee and Marchand that a low temperature GaN buffer layer
deposited on a r-plane sapphire would not result in reducing the lattice
constant mismatch between non-polar a-plane GaN thin film and r-plane
sapphire substrate so as to obtain a non-polar GaN thin film having a smooth
planar surface and reduced threading dislocation density and stacking fault
density. See, e.g., In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(explaining “[t]he prior art’s mere disclosure of more than one alternative
does not constitute a teaching away from any of these alternatives because
such disclosure does not criticize, discredit, or otherwise discourage the
solution claimed”); Para-Ordnance Mfg., Inc. v. SGS Imps. Int’l, Inc.,
73 F.3d 1085, 1090 (Fed. Cir. 1995) (to teach away, a reference must state
that it “should not” or “cannot” be used in combinations with the other
reference); In re Gurley, 27 F.3d 551, 552-53 (Fed. Cir. 1994) (“The degree
of teaching away will of course depend on the particular facts; in general, a
reference will teach away if it suggests that the line of development flowing
from the reference’s disclosure is unlikely to be productive of the result
sought by the applicant.” (citations omitted)).
Turning now to separately argued dependent claims 7, 13 and 39, we
determine claim 7 specifies depositing the nitride buffer layer “at
approximately atmospheric pressure,” and claim 39 specifies the same step
as claim 7 and the further step of growing the non-polar GaN thin film “at
approximately 0.2 atmospheres or less.” App. Br. 26, 27 (Claims App’x).
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11
We agree with the Examiner that Lee would have disclosed that the GaN
thin film is grown via MOCVD at a pressure of 1-760 Torr which
encompasses the second pressure range specified in claim 39, and the
disclosure would have led one of ordinary skill in the art to deposit a GaN
buffer layer within the pressure range as well which overlaps with the
pressure range specified in claim 7 and the first pressure range specified in
claim 39. Ans. 7-8, 14-15 (citing Lee ¶ 0048). We are of the opinion that,
contrary to Appellants’ contentions, one of ordinary skill in the art would
have adjusted the intra-chamber pressure as required to deposit a particular
layer. App. Br. 22; Reply Br. 16. See, e.g., In re Aller, 220 F.2d 454,
456-58 (CCPA 1955) (“[W]here the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.”).
We determine claim 13 specifies, among other things, that the
nitrogen flow rate in the MOCVD process is “40,000 µmol per minute.”
App. Br. 26 (Claims App’x). The Examiner finds that Lee would have
disclosed a nitrogen flow of “1-20 slpm,” and while not disputing
Appellants’ contention that “1 slpm . . . = 44631 micromol per minute,”
determines that the claimed “40,000 µmol” is “about 0.9 slpm” which is
close enough to the lower limit of Lee’s nitrogen flow range that one of
ordinary skill in the art would have expected either nitrogen flow rate to
produce products with the same properties. Ans. 13 (citing Lee ¶ 0046),
15 (citing Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir.
1985)); App. Br. 22; Reply Br. 15. We find Lee would have disclosed to
one of ordinary skill in the art that in growing a single crystal via the
MOCVD method “flow rate of the carrier gas should be preferably limited to
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1-20 slpm.” Lee ¶ 0046. We find no disclosure in Lee which limits the flow
rate to the lower limit of the preferred range, and thus Lee’s disclosure does
not teach away from the claimed nitrogen flow rate as Appellants contend.
Reply Br. 15. Thus, we agree with the Examiner’s position. See, e.g.,
Titanium Metals, 778 F.2d at 783; see also Fulton, 391 F.3d at 1201;
Para-Ordnance Mfg., 73 F.3d at 1090; Cf. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997) (“The statement in Zehender that ‘[i]n general, the
thickness of the protective layer should not be less than about [100
Angstroms]’ falls far short of the kind of teaching that would discourage one
of skill in the art from fabricating a protective layer of 100 Angstroms or
less.”).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of APA, Lee and Marchand, and as further combined
with Flynn and Amano, with Appellants’ countervailing evidence of and
argument for nonobviousness and conclude, by a preponderance of the
evidence and weight of argument, that the claimed invention encompassed
by appealed claims 1-14, 34, 38, 39, 42 and 43 would have been obvious as
a matter of law under 35 U.S.C. § 103(a).
We summarily affirm the grounds of rejection under the judicially
created doctrine of obviousness-type double patenting of claims 1-14 and 43
over claims 1-19 of Chakraborty and Marchand, and of claims 1-14, 34, 38,
39, 42 and 43 over claims 1-9 of Craven and Marchand, which grounds were
maintained in the Final Office Action and have not been withdrawn by the
Examiner in the Answer. See above note 2. See Manual of Patent
Examining Procedure § 1207.02 (8th ed., Rev. 3, August 2005). Contrary to
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Appellants’ position, the Examiner has not identified either of these grounds
of rejection as “provisional.” Final Office Action 9-11; App. Br. 23,
The Primary 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)(iv).
AFFIRMED
cam