Ex parte Klocek

Board of Patent Appeals and Interferences

Feb 27, 2001

08473419 (B.P.A.I. Feb. 27, 2001)

The opinion in support of the decision being entered today was not written for publication and
is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PAUL KLOCEK
____________
Appeal No. 1997-3696
Application No. 08/473,419
____________
ON BRIEF
____________
Before GARRIS, PAK, and TIMM, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final rejection of claims
61-68, which are all of the claims pending in this application.
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Application No. 08/473,419
THE INVENTION
Appellant's invention relates to a method of forming a compound semiconductor material, a
method of making silicon (Si) and germanium (Ge) crystals, and a crystalline material. Claims 61, 65,
and 66 are illustrative:
61. A method of forming a compound semiconductor material, comprising the steps of:
(a) providing a vessel having a bottom;
(b) placing a flexible compliant carbon cloth containing substantially no contaminants adverse to
the formation of said compound semiconductor material on said bottom of said vessel;
(c) forming said compound semiconductor material in crystalline form in said vessel and on said
cloth; and
(d) removing said compound semiconductor material in crystalline form from said vessel and
from said cloth.
65. A method of making Si and Ge crystals comprising the steps of:
(a) providing a vessel having inner walls and containing one of molten Si and Ge and water
thereover, said water containing boron oxide; and
(b) cooling the molten Si or Ge to crystalline form progressively first in a predominantly
horizontal direction from the bottom center of said vessel to the inner walls of said vessel and then
predominantly vertically from the bottom toward the top of said vessel to form said crystal.
66. A crystalline material having a resistivity in the range of from about 0.7 to about 10 ohm-
cm and an electron mobility greater than 3000 cm /volt-second.2
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A translation of Miyazaki accompanies this decision.1
A copy of McNeely accompanies this decision.2
THE REFERENCES RELIED UPON
The prior art references of record relied upon by the examiner in rejecting the appealed claims
are:
Ciszek et al. (Ciszek) 4,243,471 Jan. 6, 1981
Bult et al. (Bult) 4,585,511 Apr. 29, 1986
Naumann et al. (Naumann) 4,738,831 Apr. 19, 1988
Matsuo et al. (Matsuo) 4,888,242 Dec. 19, 1989
Miyazaki 63-123,892 May 27, 19881
(Japan)
We further rely upon the following prior art reference cited and applied by this panel of the
Board in a new ground of rejection:
McNeely et al. (McNeely) 3,533,967 Oct. 13, 19702
THE REJECTIONS
Claims 61-64 stand rejected under 35 U.S.C. § 103 as being unpatentable over Miyazaki in
view of Matsuo. Claim 65 stands rejected under 35 U.S.C. § 103 as being unpatentable over Ciszek
Appeal No. 1997-3696 Page 4
Application No. 08/473,419
in view of Naumann and Bult. Claims 66-68 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Miyazaki.
OPINION
We reverse the rejections of claims 61-64 and 66-68 and affirm the rejection of claim 65. In
addition, we enter a new ground of rejection with respect to claims 66-68.
Rejection of Claims 61-64 over Miyazaki in View of Matsuo
Claim 61 is directed to a method of forming a compound semiconductor material. A flexible
compliant carbon cloth is placed on the bottom of a vessel and the compound semiconductor is formed
on the cloth and then removed from the vessel and cloth. The cloth contains substantially no
contaminants adverse to the formation of the compound semiconductor material.
Miyazaki describes a crucible used in a process of forming a semiconductor single crystal. The
crucible is formed by roughening the surface of a quartz boat by, for instance, sand-blasting and then
coating the roughened surface with carbon by, for instance, thermal deposition of hydrocarbons
(translation, page 4, lines 5-9 and page 5, lines 2-19). The examiner has recognized that Miyazaki
does not describe a flexible compliant carbon cloth on the bottom of the crucible and therefore the
examiner looks to Matsuo to fill this gap. The examiner states that Matsuo teaches a graphite liner
which is flexible and conforms to the crystal growth crucible and concludes that “[i]t would have been
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Application No. 08/473,419
obvious to one of ordinary skill in the art to modify the [Miyazaki] process by the teachings of the
[Matsuo] reference to use a flexible graphite liner in order to create a uniform temperature in the
vessel.” (Answer, page 3).
We agree with appellant that the combined descriptions of Miyazaki and Matsuo do not fairly
suggest the method recited in claim 61. What Matsuo describes is a sheet made by, for example,
compression or roll forming a material constituted of graphite particles (col. 1, line 52 to col. 2, line 15).
As shown in Figure 7, the graphite sheet material 21 is interposed between an upper quartz crucible 20
and a lower graphite crucible 19 (col. 4, lines 40-47). The sheet material serves to protect the
underlying graphite crucible and assures a uniform temperature distribution, mitigates thermal impact
and diminishes the expansion and contraction stresses due to the difference between quartz and
graphite in coefficient of expansion (col. 4, lines 62-68). These are all good reasons for including a
flexible graphite sheet between crucibles of differing materials, but a reason, suggestion or motivation to
substitute a coating of carbon on a quartz crucible with a flexible cloth is lacking. The examiner
indicates that one of ordinary skill in the art would have used a flexible graphite liner in the process of
Miyazaki in order to create a uniform temperature in the vessel. However, it is not clear why a coating
of carbon would have been expected to have a less uniform temperature distribution than a flexible
sheet of graphite.
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Application No. 08/473,419
In our view, the reason, suggestion or motivation for making the combination, as expressed in
the examiner's stated rejection, is not adequately grounded in the prior art. Accordingly, we reverse the
examiner’s rejection of claims 61-64.
Anticipation of Claims 66-68 by Miyazaki
The rejection of claims 66-68 rests on a theory that the Group II-VI single crystal
semiconductors made by the process described by Miyazaki inherently possess the resistivity and
electron mobility properties recited in the claims. “[I]t is elementary that the mere recitation of a newly
discovered function or property, inherently possessed by things in the prior art, does not cause a claim
drawn to those things to distinguish over the prior art.” In re Best, 562 F.2d 1252, 1254, 195 USPQ
430, 433 (CCPA 1977)(quoting In re Swinehart, 439 F.2d 210, 169 USPQ 226 (1971)).
Therefore, where the examiner has reason to believe that a property asserted to be critical for
establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior
art product, the examiner possesses the authority to require an applicant to prove that the subject
matter shown to be in the prior art does not in fact possess the property. Id. However, before an
applicant can be put to this burdensome task, the examiner must provide enough evidence or scientific
reasoning to establish that the examiner’s belief that the property is inherent is a reasonable belief. Ex
parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Int. 1990); Ex parte Skinner, 2 USPQ2d
1788, 1789 (Bd. Pat. App. & Int. 1986). It must be remembered that the burden of establishing a
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Application No. 08/473,419
prima facie case of unpatentability rests upon the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984). It is therefore incumbent on the examiner to provide a factual basis for the assertion
of inherency which establishes its reasonableness. In the present case, the examiner has not discharged
that burden.
Claim 66 is directed to a crystalline material having a resistivity in the range of from about 0.7 to
about 10 ohm-cm and an electron mobility greater than 3000 cm /volt-second. The examiner states2
that Miyazaki “teaches the claimed semiconductor.” (Answer, page 3). The examiner further states that
the reference teaches forming a crystalline material by the method shown in the specification including
using a carbon liner (Answer, page 5). However, as pointed out by appellant at pages 3-4 of the Reply
Brief, the process described by Miyazaki is not the same as that described in the specification. For
instance, Miyazaki describes a three temperature horizontal Bridgeman method using a carbon covered
quartz crucible for growing the crystals (English abstract; translation, page 2). The specification
describes a vertical growth method using a graphite crucible covered with a carbon cloth. The
specification indicates that the process overcomes limitations in the Bridgeman process and results in a
more uniform and controllable resistivity. The examiner has not provided any convincing technical
reasoning or objective evidence tending to show that the differences in the processes would not result in
differences in the material. We note that the specification itself seems to indicate that differences in the
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Application No. 08/473,419
processes do result in differences in the crystals obtained. We therefore conclude that a prima facie
case of anticipation over Miyazaki has not been established.
New Ground of Rejection
Pursuant to our authority under 37 CFR § 1.196(b), we enter the following new ground of
rejection:
Claims 66-68 are rejected under 35 U.S.C. § 102(b) as anticipated by McNeely.
McNeely describes GaAs crystalline materials which have resistivities and electron mobilities
within the claimed ranges. For instance, example 7 describes a slice of GaAs having a resistivity of
2.60 ohm-cm and an electron mobility of about 6150 cm /volt-second. These values are squarely2
within the claimed resistivity range of about 0.7 to about 10 ohm-cm and electron mobility range of
greater than 3000 cm /volt-second. The dies of GaAs described in Examples 8 and 9 also have2
resistivity and electron mobility levels within the claimed ranges. See also, Table I which lists
resistivities and electron mobilities along a GaAs ingot. All the resistivity and electron mobility values
from a position 11 cm to a position 30.1 cm along the ingot are within the claimed ranges. The GaAs
crystalline material at these positions, therefore, is of the claimed composition. See also Table III,
positions 10.4 to 17.4 cm, Table IV, positions 20.5 to 25.3; Table V, position 19.0 to 30.0 cm; and
Table VI, positions 6.0, 16.0, and 26.0 cm. All these ingots contain positions at which the GaAs has
the resistivities and electron mobilities required by the claims.
Appeal No. 1997-3696 Page 9
Application No. 08/473,419
Rejection of Claim 65 over Ciszek in View of Naumann and Bult
Claim 65 is directed to a method of making silicon (Si) and germanium (Ge) crystals by placing
one of Si and Ge and water containing boron oxide in a vessel and cooling to crystallize the Si or Ge.
The cooling progresses in a predominately horizontal direction from the bottom center of the vessel to
the inner walls and then predominately vertically from the bottom toward the top of the vessel to form
the crystal. According to the specification, at page 9, this progressive cooling is accomplished by
imposing a cold spot on the bottom center of a crucible having a tapered bottom and tapered sides so
that nucleation of the melt occurs at the bottom center. A uniform thermal gradient across the furnace
and perpendicular to the crucible vertical axis is then imposed on the melt to accomplish crystallization
in the vertical direction.
Ciszek describes a process of growing Si crystals using a vertical temperature gradient cooling
process. Appellant’s sole argument is that the combination of prior art does not teach or suggest the
horizontal and vertical progressive cooling step of the claimed process. We agree with the examiner
that such a cooling progression would have necessarily occurred in the process of Ciszek. Ciszek
describes maintaining a vertical temperature gradient on the melt so that the molten Si solidifies from
bottom to top (col. 2, lines 27-31, Figure 1, col. 3, lines 43-44). Ciszek also discloses forming the
container with a conical bottom recess for a seed to be placed therein (col. 3, lines 5-7). The point of
the conical bottom contains the seed and therefore crystallization will begin at the bottom center of the
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Application No. 08/473,419
container. Furthermore, the crystallization would progress from the tip of the cone horizontally outward
before progressing vertically upward because the melt in the horizontal direction would be cooler than
the melt above due to the vertical temperature gradient.
We conclude that the examiner has established a prima facie case of obviousness with respect
to the subject matter of claim 65 which has not been sufficiently rebutted by appellant.
CONCLUSION
We reverse the examiner’s rejection of claims 61-64 under 35 U.S.C. § 103. We reverse the
examiner’s rejection of claims 66-68 under 35 U.S.C. § 102(b), but enter a new ground rejection. We
affirm the examiner’s rejection of claim 65 under 35 U.S.C. § 103.
In addition to affirming the examiner’s rejection of one or more claims, this decision contains a
new ground of rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec. 1 1997, by final rule
notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,
122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides that "[a] new ground of rejection shall not be
considered final for purposes of judicial review."
Regarding any affirmed rejection, 37 CFR § 1.197(b) provides:
(b) Appellants may file a single request for rehearing within two months from
the date of the original decision . . . .
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Application No. 08/473,419
37 CFR § 1.196(b) also provides that the appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of proceedings (37 CFR
§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected
or a showing of facts relating to the claims so rejected, or both, and
have the matter considered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under § 1.197(b) by the
Board of Patent Appeals and Interferences upon the same record. . . .
Should the appellant elect to prosecute further before the Primary Examiner pursuant to 37
CFR § 1.196(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with
respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the
prosecution before the examiner unless, as a mere incident to the limited prosecution, the affirmed
rejection is overcome.
If the appellant elects prosecution before the examiner and this does not result in allowance of
the application, abandonment or a second appeal, this case should be returned to the Board of Patent
Appeals and Interferences for final action on the affirmed rejection, including any timely request for
rehearing thereof.
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Application No. 08/473,419
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
37 CFR § 1.196(b)
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
Appeal No. 1997-3696 Page 13
Application No. 08/473,419
Jerry W. Mills
Baker & Botts, L.L.P.
2001 Ross Avenue
Dallas, TX 75201