Ex Parte Frantz et al

Patent Trial and Appeal Board

Feb 22, 2017

14201009 (P.T.A.B. Feb. 22, 2017)

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.
102406-US2 5595
EXAMINER
DEO, DUY VU NGUYEN
ART UNIT PAPER NUMBER
1713
MAIL DATE DELIVERY MODE
14/201,009 03/07/2014
26384 7590 02/22/2017
NAVAL RESEARCH LABORATORY
ASSOCIATE COUNSEL (PATENTS)
CODE 1008.2
4555 OVERLOOK AVENUE, S.W.
WASHINGTON, DC 20375-5320
Jesse A. Frantz
02/22/2017 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 JESSE A. FRANTZ, JASON D. MYERS, ROBEL Y. BEKELE,
and JASBINDER S. SANGHERA1
Appeal 2016-003031
Application 14/201,009
Technology Center 1700
Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of a final
rejection of claims 1—4, 6—10, 12—15, and 17.2 We have jurisdiction under
35 U.S.C. §6(b).
We AFFIRM-IN-PART.
1 The Government of the United States of America, as represented by the
Secretary of the Navy is identified as the real party in interest. App. Br. 2.
2 Claims 5,11, and 16 are not rejected, but rather are objected to, (Final Act.
5) and are therefore not the subject of this appeal.
Appeal 2016-003031
Application 14/201,009
STATEMENT OF THE CASE
Appellants claim various methods of lift-off comprising depositing,
bonding, and etching different layers.
Representative claims 1 and 14, taken from the Claims Appendix of
the Appeal Brief, appear below.
1. A method of lift-off comprising:
depositing a sacrificial layer on an original substrate,
depositing a lift-off layer onto the sacrificial layer at a substrate
temperature between 100°C and 1000 °C,
bonding the lift-off layer to a lift-off substrate using an adhesive,
and
etching the sacrificial layer to obtain the lift-off layer attached
to the lift-off substrate,
wherein at least one of said depositing steps occurs under non-
epitaxial conditions, and
wherein the etching is sufficient to separate the lift-off layer and
the lift-off substrate from the original substrate.
14. A method of lift-off comprising:
depositing a sacrificial layer of acid soluble glass on an original
substrate,
depositing a lift-off layer comprising copper indium gallium
diselenide onto the sacrificial layer at a substrate temperature of 550°C,
bonding the lift-off layer to a lift-off substrate using an adhesive, and
etching the sacrificial layer to obtain the lift-off layer attached to the
lift-off substrate, wherein the etching is sufficient to separate the lift-off
layer and the lift-off substrate from the original substrate.
The Examiner makes the following rejections:
1. Claims 1 and 3 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Yonehara et al. (US 6,656,271 B2, issued Dec. 2,
2003; hereinafter “Yonehara”);
2. Claims 6, 8, 10, 12, and 14 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Yonehara in view of Lochtefeld et al.
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Appeal 2016-003031
Application 14/201,009
(US 2005/0156246 Al; published July 21, 2005; hereinafter
“Lochtefeld”); and
3. Claims 2, 4, 7, 9, 13, 15, and 17 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Yonehara alone or in
combination with Lochtefeld.
Final Act. 2-4; Ans. 2-4.
DISCUSSION
In each of the above rejections, the Examiner finds that Yonehara
discloses the claimed etching step that appears in each of independent claims
1, 8, and 14. Final Act. 2—A\ Ans. 2-4. The Examiner also finds that
Yonehara discloses the limitation appearing in independent claims 1 and 8
requiring that “at least one of said depositing steps occurs under non-
epitaxial conditions.” Final Act. 3; Ans. 2, 4.
Appellants present two main contentions in their Briefs:
1. that Yonehara does not disclose the claimed etching step germane
to independent claims 1, 8, and 14 (App. Br. 3^4; Reply Br. 2); and
2. that Yonehara does not disclose the at least one deposition step that
must occur “under non-epitaxial conditions” as required by
independent claims 1 and 8 (App. Br. 4—5; Reply Br. 2—3).
Appellants make no substantive argument regarding the disclosure of
the Lochtefeld reference, other than to state “Lochtefeld as applied fails to
cure [] the deficiencies of Yonehara.” App. Br. 5.
To support their first contention, Appellants allege that Yonehara
“discloses ‘two separation methods’ (col. 7, line 9), namely (a) ‘externally
heating a multilayer structure’ (col. 7, lines 9—10) and (b) ‘imparting
separation energy’ by various mechanical techniques (col. 7, line 27 et seq.),
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Appeal 2016-003031
Application 14/201,009
neither of [which] includes] separation by the chemical etching process as
claimed.” App. Br. 3. Appellants also argue that “[i]t is well-recognized
that etching is a chemical process, not a mechanical one,” and argue that
Yonehara fails to disclose “an etching process that alone is sufficient to
separate the layers.” Reply Br. 2 (emphasis added)
We are not persuaded. First, we note that the claims do not recite that
the etching process “alone” is sufficient to separate the layers. Furthermore,
during examination proceedings, “claims ... are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. Of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In this case, the term “etching”
is not defined in the Specification so as to limit the claimed etching step to
only a chemical process as Appellants urge. Rather, the Specification
indicates that “[djuring etching, force may be applied to aid in separation of
the lift-off layer and the original substrate.” Spec. 1 0024. Thus, on this
record, we disagree with Appellants’ claim construction that would have us
limit the claimed “etching” to only a chemical process, and thereby exclude
mechanical forces such as those disclosed by Yonehara. Rather, we
determine that, in view of Appellants’ disclosure, the Examiner’s
interpretation of the term “etching” to include a force such as the blowing of
an etching fluid such as hydrofluoric acid or nitric acid as disclosed by
Yonahara to “facilitate the peeling/separation step” (Ans. 4) is reasonable.
To support their second contention, Appellants argue that “Yonehara
is replete with references to epitaxial growth . . . and is silent regarding the
claimed non-epitaxial depositing.” App. Br. 4. Appellants, therefore,
challenge the Examiner’s finding that Yonehara’s anodizing constitutes non-
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Appeal 2016-003031
Application 14/201,009
epitaxial depositing as claimed because “the anodized layer is derived from
the monocrystalline Si substrate” and “is therefore used for growing a film
epitaxially” because it “is lattice-matched to the substrate.” Id. Appellants
also argue that the Examiner’s finding that Yonehara’s disclosure of an
annealing step to form a layer (Final Rej. 3) “does not constitute depositing,
and there is no suggestion in the reference that any change in epitaxial
conditions has occurred.” App. Br. 5. Appellants also challenge the
Examiner’s finding that Yonehara’s ion injection method “occurs under non-
epitaxial conditions” (Ans. 4) as “unsupported by the evidence of record.”
Reply Br. 3.
We agree with Appellants. “In the prosecution of a patent, the initial
burden falls on the PTO to set forth the basis of any rejection, i.e., a prima
facie case.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007). In this
case, we determine that the Examiner does not establish that any of
Yonehara’s anodization, annealing or ion injection methods constitute a
depositing step which “occurs under non-epitaxial conditions” as recited in
independent claims 1 and 8. Rather, the Examiner makes several
unembellished statements devoid of evidence that Yonehara’s methods meet
this limitation. Final Rej. 3; Ans. 3^4. Specifically, the Examiner states that
Yonehara “teaches layer 4 is formed by anodization which [cannot] form an
epi[taxial] layer if one takes the definition (as described in the Declaration3)
that a particular crystal structure, lattice spacing, or orientation must be
present for epi[taxial] growth.” Final Rej. 3; Ans. 4. The Examiner makes
3 For purposes of this Decision, we assume the Declaration referenced here
is Appellants’ Declaration filed January 8, 2015 regarding the meaning of
“non-epitaxial conditions.” Deck 14.
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Application 14/201,009
similar assertions regarding Yonehara’s annealing (Final Rej. 3; Ans. 4) and
ion injection (Ans. 4) methods.
The Examiner fails to provide, however, any reasoned explanation or
any evidence that establishes how Yonehara’s anodization, annealing or ion
injection occurs under non-epitaxial conditions. Thus, we determine that, on
this record, the Examiner has not established a prima facie case with respect
to the limitation requiring “wherein at least one of said depositing steps
occurs under non-epitaxial conditions” as recited in independent claims 1
and 8, and, by extension, their rejected dependent claims 2-4, 6, 7, 9, 10,
and 12—13.
Therefore, because the Examiner has not established a prima facie
case of anticipation with respect to claims 1 and 3, we reverse the
Examiner’s rejection of these claims under 35 U.S.C. § 102(b). Because the
Examiner has not established a prima facie case of obviousness with respect
to claims 2, 4, 6—10, and 12—13, we reverse the Examiner’s rejections of
these claims under 35 U.S.C. § 103(a).
Because we are unpersuaded by Appellants’ contention that Yonehara
does not disclose the claimed etching step recited in claims 14, 15, and 17,
and because Appellants do not present any further arguments regarding these
claims with any specificity, we affirm the Examiner’s rejections of these
claims under 35 U.S.C. § 103(a).
SUMMARY
The Examiner’s rejection under 35 U.S.C. § 102(b) of claims 1 and 3
is reversed.
The Examiner’s rejections under 35 U.S.C. § 103(a) of claims 2, 4, 6—
10, and 12—13 is reversed.
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Appeal 2016-003031
Application 14/201,009
The Examiner’s rejections under 35 U.S.C. § 103(a) of claims 14, 15,
and 17 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).
AFFIRMED-IN-PART
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