Ex Parte Hashimoto et al

Patent Trial and Appeal Board

Mar 15, 2017

12392960 (P.T.A.B. Mar. 15, 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.
12/392,960 02/25/2009 Tadao HASHIMOTO SIXPOI-003US 9807
128825 7590 03/17/2017
Strategic Innovation IP Law Offices, P.C.
1250 Oakmead Parkway, Suite 210
Sunnyvale, CA 94085
EXAMINER
CHRISTIE, ROSS J
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
03/17/2017 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):
USPTO_mail@siiplaw.com
patent_specialist@siiplaw.com
chuck.holland @ siiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAD AO HASHIMOTO, EDWARD LETTS,
and MASANORIIKARI1
Appeal 2015-008084
Application 12/392,960
Technology Center 1700
Before WESLEY B. DERRICK, CHRISTOPHER L. OGDEN, and
BRIAN D. RANGE, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s rejection under 35 U.S.C. § 103 of claims 1-19, 27-36, and 38.
An oral hearing was held on March 6, 2017. We have jurisdiction pursuant
to 35 U.S.C. § 6.
We REVERSE.
1 Appellants identify SixPoint Materials, Inc. as the real party in interest.
Appeal Br. 2.
Appeal 2015-008084
Application 12/392,960
BACKGROUND
Appellants’ claimed invention relates to a production method for
group III nitride ingots or pieces. Spec. Abstract.
Claim 1—the sole independent claim—is reproduced below.
1. A method for producing group III nitride crystalline
pieces, comprising:
(a) growing a group III nitride ingot by the
ammonothermal method;
(b) slicing a piece out of the ingot;
(c) annealing the piece for a time at a temperature and
pressure sufficient to reduce a contaminant in said piece;
(d) concentrating the contaminant at a surface of the
piece, and, subsequent to the annealing in step (c), removing an
amount of the surface of the piece to reduce the amount of the
contaminant in the piece.
Appeal Br. (Claims Appendix) 46.
REJECTIONS
The Examiner maintains the rejection under 35 U.S.C. § 103(a) of
claims 1, 2, 4-8, 10, 12-14, 19, 27-32, 35, and 36 over TRAC2 in view of
Dwilinski,3 of claims 3,9, 11, 15-18, 33, and 34 over TRAC in view of
Dwilinski and Powell,4 and of claim 3 8 over TRAC in view of Dwilinski
and Matocha.5
2 Fujita et al., WO 2007/008198 Al, published January 18, 2007 (cited as
“TRAC” throughout this record, which convention we follow).
3 Dwilinski et al., US 2006/0037530 Al, published February 23, 2006.
4 Powell et al., US 6,458,714 Bl, October 1, 2002.
5 Matocha et al.. Comparison of metal-oxide-semiconductor capacitors on
c- and m-plane gallium nitride, Applied Physics Letters 90, 123511 (2007).
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Appeal 2015-008084
Application 12/392,960
DISCUSSION6
Having considered the Examiner’s rejections in light of Appellants’
arguments, we are persuaded that the Examiner erred reversibly in the
rejection of independent claim 1 and persists in the error as to all rejected
claims. It follows, therefore, that we reverse the Examiner’s rejection as to
all claims. “[T]he Examiner bears the initial burden ... of presenting a
prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992).
The Examiner relies on TRAC for its teaching of a method for
producing group III nitride crystalline pieces by growing an ingot by the
ammonothermal method, slicing a piece out of the ingot, and annealing the
piece for a time at a temperature and pressure sufficient to reduce a
contaminant in the piece. Final Act. 5 (citing TRAC Abstract, 6, 14-15).
The Examiner relies on Dwilinski for its teaching of methods for
reducing the level of impurities in gallium-containing nitride wafers by
rinsing the wafers in combination with the application of ultrasounds or
exposure to an electron beam, which the Examiner maintains “will
necessarily remove an amount of the surface containing the impurity and/or
remove an impurity along with an amount of the surface upon which the
impurity is located.” Final Act. 7 (citing Dwilinski 62-69).
The Examiner concludes that a person of ordinary skill in the art at the
time of the invention would have found it obvious to modify the process of
TRAC to include “any one of the rinsing step(s) in combination with the
6 We refer to the Specification filed February 25, 2009 (“Spec.”), the Final
Office Action mailed April 23, 2014 (“Final Act.”), the Appeal Brief filed
January 23, 2015 (“Appeal Br.”), the Examiner’s Answer mailed July 7,
2015 (“Ans.”), and the Reply Brief filed September 7, 2015 (“Reply Br.”).
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Appeal 2015-008084
Application 12/392,960
application of ultrasounds or electron beams pursuant to Dwilinski’s
teachings” in order to reduce impurities in the gallium-containing nitride and
thus “improve the quality of the wafer being produced.” Final Act. 8.
Appellants argue, inter alia, that Dwilinski does not teach a wash or
rinse step that erodes a wafer, i.e., removes a portion of the wafer, rather
than washes contaminants off of the surface of the wafer. Appeal Br. 26-27
(citing Dwilinski 62-69); see also Reply Br. 11-13. Appellants contend
that there is nothing in TRAC or Dwilinski that implies, let alone requires,
surface removal during a rinse step. Appeal Br. 27.
Appellants further contend that the Examiner’s basis for Dwilinski’s
process eroding the surface of the wafer is not reasonable and that the
burden has not, accordingly, shifted to them to rebut the Examiner’s
determination. Appeal Br. 27-28.
In response, the Examiner maintains that “Dwilinski’s language
‘removing impurities’ alone communicates the ‘wafer is necessarily eroded’
. . . and requires the removal of impurities” and, in relying on Dwilinski’s
teaching of application of ultrasound or electron beam exposure, de facto
maintains that the disclosed processes using these erodes the wafer. Ans.
25-26 (citing Dwilinski 66-69; MPEP § 2123).
On this record, we find ill-founded the Examiner’s reliance on
Dwilinski as teaching the removal of wafer material, including impurities
within the wafer, by eroding the surface of the wafer. Dwilinski’s “process
for removing impurities” is characterized in that “at least some impurities
[are] washed off from the mono-crystalline nitride.” Dwilinski 62-65.
Further, Dwilinski discloses that “the process for removing impurities”
(Dwilinski 66) “is aided by the application of ultrasounds (Dwilinski 68)
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Appeal 2015-008084
Application 12/392,960
or “is aided by exposure to an electron beam” (Dwilinski 69). The
language of “removing impurities” cited by the Examiner does not indicate
that the wafer is necessarily eroded where Dwilinski explicitly teaches
removing impurities is accomplished where impurities are washed off from
the mono-crystalline nitride. Neither is there an indication that the process
erodes the wafer when aided by application of ultrasound or electron beam
exposure where Dwilinski merely describes these to aid the process for
removing impurities which, as explained above, is accomplished where
impurities are washed off from the mono-crystalline nitride.
On this record, the Examiner’s articulated rejection lacks the requisite
factual basis for the removal of “an amount of the surface of the piece [of
group III nitride ingot] to reduce the amount of the contaminant in the piece”
subsequent to annealing as recited in claim 1. In re Warner, 379 F.2d 1011,
1017 (CCPA 1967) (“The Patent Office has the initial duty of supplying the
factual basis for its rejection. It may not. . . resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis.”).
We decline to scour the record in the first instance for facts that might
support the rejection as our primary role is review, not examination de novo.
CONCLUSION
The Examiner’s decision rejecting claims 1-19, 27-36, and 38 is
REVERSED.
REVERSED
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