Ex Parte Kernan et al

Patent Trial and Appeal Board

Sep 24, 2015

12952288 (P.T.A.B. Sep. 24, 2015)

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.
12/952,288 11/23/2010 Brian D. Kernan P6065US00 1348
7590 09/24/2015
MAX ERA INC.
C/O DACHENG LAW OFFICES, LLP
2 WALL STREET, FLOOR 21
NEW YORK, NY 10005
EXAMINER
QI, HUA
ART UNIT PAPER NUMBER
1714
MAIL DATE DELIVERY MODE
09/24/2015 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 BRIAN D. KERNAN, GARY J. TARNOWSKI,
WEIDONG HUANG, SCOTT REITSMA,
and CHRISTINE RICHARDSON
_____________

Appeal 2014-001807
Application 12/952,288
Technology Center 1700
____________

Before N. WHITNEY WILSON, JEFFREY W. ABRAHAM, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s June
4, 2013 decision (“Final Act.”) finally rejecting claims 1–5, 7–11, and 13–
17. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify the real party in interest as Max Era Inc. (Appeal Br. 1).
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Application 12/952,288
2
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a method for growing crystalline
semi-conductor sheets using a crystalline sheet growth furnace with a
plurality of crystal sheet growth lanes (Abstract). The molten silicon used to
produce the sheets is co-doped with both a p-type and an n-type dopant (id.).
The crystalline semi-conductor sheets produced by the invention are said to
have a reduced range of resistivities over the plurality of growth lanes (id.).
Shown below is an annotated version of Fig. 2 from Appellants’ application,
which shows an apparatus for carrying out the claimed process:

Annotated Fig. 2 schematically shows a partially cut away view of the
growth furnace which may be used to carry out the claimed invention.

Details of the claimed method are shown in independent claim 1,
which is representative of the claimed invention and which is reproduced
below from the Claims Appendix of the Appeal Brief:

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1. A method of growing crystalline semiconductor sheets, the
method comprising:
providing a crystalline sheet growth furnace, the furnace
including a crucible configured with a material introduction
region and a crystal growth region including a plurality of
crystal sheet growth lanes, the crucible configured to
produce a generally one directional flow of material from
the introduction region toward the crystal sheet growth lane
farthest from the material introduction region;
receiving at the material introduction region silicon doped with
a p-type dopant and an n-type dopant, wherein the ratio of
the concentration by weight of the n-type dopant to the p-
type dopant exceeds 0.1, the doped silicon forming a melt;
growing p-type crystalline sheets from the melt in at least two
crystalline sheet growth lanes; and
removing material from the crucible at a material removal
region, the crystal growth region located between the
material introduction region and the material removal
region,
wherein the percentage of material removed is not less than
0.5% of the material introduced at the material introduction
region,
wherein the range in resistivities of the crystalline
semiconductor sheets produced in the plurality of growth
lanes is reduced compared to forming the sheets without co-
doping.
REJECTIONS
I. Claims 1–3, 7, and 13–14 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Harvey2 in view of Dethloff,3 as evidenced by
Tsuchida.4

2 Harvey et al., U.S. Patent Pub. 2008/0134964 A1, published June 12, 2008.
3 Dethloff et al., U.S. Patent Pub. 2008/0029019 A1, published February 7, 2008.
4 Tsuchida et al., U.S. Patent Pub. 2009/0159230 A1, published June 25, 2009.
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II. Claims 4, 5, 8–11, and 15–17 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Harvey in view of Dethloff, as evidenced by
Tsuchida, and further in view of Tsuya.5

Appellants do not offer separate arguments with respect to any of the
dependent claims (Appeal Br. 6). Moreover, Appellants do not offer
separate arguments with respect to any of independent claims 1, 7, or 13
(see, Appeal Br. 6–17). Accordingly, our analysis will focus on the
obviousness rejection of claim 1 over Harvey in view of Dethloff as
evidenced by Tsuchida.

DISCUSSION
The Examiner finds that Harvey discloses each step of the claimed
process, except that Harvey does not teach “receiving at the material
introduction region silicon doped with a p-type dopant and an n-type dopant,
wherein the ratio of the concentration by weight of the n-type dopant to the
p-type dopant exceeds 0.1, the doped silicon forming a melt” (Final Act. 3–
4). The Examiner further finds that Dethloff discloses a method for
producing silicon thin sheets from molten silicon, where the silicon
feedstock contains a p-type dopant and an n-type dopant in a ratio that
exceeds the claimed lower limit 0.1 for the ratio of weight concentration of
n-type dopant to p-type dopant (Final Act. 4, citing Dethloff, Abstract, ¶ 8).
Finally, the Examiner finds that while Harvey discloses the removal of
molten silicon from a material removal region, it does not explicitly teach a
percentage of the material removed. However, the Examiner finds that it is

5 Tsuya et al., U.S. Patent No. 4,523,966, issued June 18. 1985.
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possible to calculate from Harvey’s disclosure, in combination with
information from Tsuchida, that the amount of material removed from
Harvey exceeds 0.5% of the material introduced at the material introduction
region (Final Act. 5; Ans. 11–13).
The Examiner concludes that that it would have been obvious to use
Dethloff’s co-doped silicon in Harvey’s process and make the claimed
invention in order to increase the amount of p-type or n-type silicon in a thin
silicon sheet, and further controlling the resistivity of the silicon sheets, as
taught by Dethloff (Final Act. 4, citing Dethloff, ¶¶ 7, 8). The Examiner
also finds that the process arrived at by using Dethloff’s co-doped silicon in
Harvey’s process would reasonably be expected to have the claimed reduced
range of resistivities of the crystalline semi-conductor sheets produced in the
plurality of growth lanes as compared to sheets formed without co-doped
silicon (Id. at 6).
We have carefully considered the arguments set forth by Appellants in
the Appeal Brief, and conclude, essentially for the reasons set forth by the
Examiner in the Final Action and the Answer, that Appellants have not
demonstrated reversible error in the obviousness rejections of claims 1, 7,
and 13. We add the following for emphasis.
An obviousness rejection must be supported by “some articulated
reasoning with some rational underpinning” to combine the known elements
in the manner required in the claim at issue. KSR Int’l. Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). However, “the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. In determining whether the
subject matter of a claim is obvious, “neither the particular motivation nor
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the avowed purpose of the [applicant] controls. What matters is the
objective reach of the claim.” Id. at 419.
In this instance, Appellants assert that Examiner’s findings with
regard to why a person of skill in the art would have used Dethloff’s co-
doped silicon in Harvey’s process “fall[] far short of the ‘articulated
reasoning with some rational underpinnings’ required by the U.S. Supreme
Court” (Appeal Br. 12–13). However, Appellants have not provided a
specific explanation of why the Examiner’s rationale for combining the
references “falls far short” of that required by KSR. A mere assertion
without explanation that the Examiner’s findings do not support the
elements of a prima facie case of obviousness is not sufficient to show error
in the rejection. Cf. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(holding that a mere recitation of the claim elements and a naked assertion
that the corresponding elements were not found in the prior art is not a
separate argument for patentability).
Appellants also argue that Harvey teaches away from the use of a co-
doped silicon because it teaches only the use of a doped silicon, and the
Specification states that “doping feedstock with more than one dopant type
(i.e., co-doping) has not generally been performed” (Appeal Br. 8, citing
Spec. ¶ 30). Appellants do not challenge the Examiner’s finding that
Dethloff teaches co-doping molten silicon, but argue that Dethloff’s process
is sufficiently different from the claimed process (or Harvey’s process) that
combination with Harvey would have been counter-intuitive (Appeal Br. 9–
10).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, . . . would be led in a direction divergent
from the path that was taken by the applicant.” In re Haruna, 249 F.3d
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1327, 1335 (Fed. Cir. 2001). Moreover, prior art does not teach away from
claimed subject matter unless the prior art also criticizes, discredits, or
otherwise discourages the solution claimed. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). That Harvey does not teach the use of co-
doped silicon is not sufficient to show a teaching away from using such a
material, as Appellants have not shown that Harvey criticizes, discredits, or
otherwise discourages the use of co-doped silicon.
Appellants argue that additional cost of using co-doped silicon would
have discouraged its use in Harvey’s process (Appeal Br. 8–9). However,
Appellants have not shown error in the Examiner’s findings that Dethloff
provides a reason for using co-doped silicon.
Finally, Appellants argue that only they recognized the problem with
Harvey’s process of resistivity variation in the sheets produced using the
process, and therefore there would have been no reason to try to solve such a
problem by using co-doped silicon (Appeal Br. 10). However, the Examiner
has provided a reasoned explanation why a person of skill in the art would
have used Dethloff’s co-doped silicon in Harvey’s process. That such a
reason may have been different from Appellants’ motivations does not
demonstrate error in the obviousness rejection. KSR, 550 U.S at 419.

CONCLUSION
We AFFIRM the rejection of claims 1–5, 7–11, and 13–17 under 35
U.S.C § 103(a) as being unpatentable over Harvey in view of Dethloff, in
view of Tsuchida and, as necessary, further in view of Tsuya.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED