Ex Parte Loboda

Patent Trial and Appeal Board

Nov 29, 2016

13963989 (P.T.A.B. Nov. 29, 2016)

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.
13/963,989 08/09/2013 Mark Loboda 247166-000108USPT 3404
11880 7590
Nixon Peabody
70 West Madison, Suite 3500
Chicago, IL 60602
12/01/2016 EXAMINER
BRATLAND JR, KENNETH A
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
docketingchicago @ nixonpeabody.com
ipairlink @ nixonpeabody. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK LOBODA
Appeal 2015-008317
Application 13/963,989
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134 from the September 11,
2014 decision of the Examiner finally rejecting claims 1—7 and 27—29. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the real party in interest as Dow Coming Corporation
(Br. 3).
Appeal 2015-008317
Application 13/963,989
CLAIMED SUBJECT MATTER
Appellant’s invention is directed to a method for growing a silicon carbide
crystalline semiconductor material by vapor deposition onto a seed crystal,
which is provided on a supporting shelf (Spec. H 3, 27, 28; Title). Independent
claim 1 is representative of the claims on appeal, and is reproduced below from
the Claims Appendix to the Brief {key claim limitations shown in italics)'.
1. A method of forming an SiC crystal, the method comprising:
a. placing a seed crystal on a shelf of an insulated
graphite container and preventing an exposed back surface
of the seed from contacting the ceiling thereby defining a
volume between ceiling of the graphite container and the
exposed back surface of the seed, and wherein an internal
diameter of the graphite container at the shelf is sufficiently
large to allow for thermal expansion of the seed',
b. placing a source of silicon and carbon atoms in the
insulated graphite container, wherein the source of silicon
and carbon atoms is for transport to the seed crystal to grow
the SiC crystal;
c. placing the graphite container inside a furnace;
d. evacuating the furnace and filling with inert gas to a
pressure above 600 [T]orr;
e. heating the furnace to a temperature from about
2,000°C to about 2,500°C; and,
f. evacuating the induction furnace to a pressure of from
about 0.1 Torr to about 100 Torr, while directing gas flow
from below the seed crystal through a periphery of the seed
crystal and to a center of the volume between ceiling of the
graphite container and the back surface of the seed, to
thereby facilitate vapor transport from the source of silicon
and carbon atoms to the seed while preventing the back
surface of the seed from contacting the ceiling.
(Br. 17; Claims App.)
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Appeal 2015-008317
Application 13/963,989
REJECTIONS
(1) Claims 1—7 are provisionally rejected on the grounds of
nonstatutory obviousness-type double patenting (OTDP) over claims 1—4
and 6—9 of copending Application No. 14/058,167 (hereinafter “the ’167
Application”).
(2) Claims 1, 2, and 27—29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fujimoto2 in view of Kondo.3
(3) Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Fujimoto in view of Kondo, and further in view of Kinoshita.4
(4) Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Fujimoto in view of Kondo, and further in view of Kinoshita and Leonard.5
(5) Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Fujimoto in view of Kondo, and further in view of Vodakov.6
We exercise our discretion not to review the Examiner’s provisional
rejection of claims 1—7 for OTDP. See Ex parte Jerge, 2012 WL 1375142 at
*3 (BPAI 2012) (informative) (“Panels have the flexibility to reach or not
reach provisional obviousness-type double-patenting rejections.” (citing Ex
parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential))). While we do
not affirm the Examiner’s provisional OTDP rejection, should any claims
issue from the ’ 167 Application, the Examiner remains free to assert a non­
provisional OTDP rejection based on any such issued claims.
2 Fujimoto et al., U.S. Patent Pub. No. 2010/0080956 Al, published Apr. 1, 2010.
3 Kondo et al., U.S. Patent Pub. No. 2002/0083892 Al, published July 4, 2002.
4 Kinoshita et al., U.S. Patent Pub. No. 2007/0176531 Al, published Aug. 2, 2007.
5 Leonard et al., U.S. Patent Pub. No. 2008/0008641 Al, published Jan. 10, 2008.
6 Vodakov et al., U.S. Patent No. 6,534,026 B2, issued Mar. 18, 2003.
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Appeal 2015-008317
Application 13/963,989
Appellant does not make separate substantive arguments in support of
patentability of any of the claims (see generally Br. 10-16). Accordingly, our
discussion will focus on the obviousness rejection of independent claim 1.
DISCUSSION
The Examiner finds that Fujimoto’s method of forming an SiC crystal
teaches the elements of the claimed method except that
Fujimoto does not explicitly teach that the seed crystal is placed
on a shelf of the insulated graphite container such that a volume
in a back surface of the seed is defined, the exposed back
surface of the seed is prevented from contacting the ceiling, the
internal diameter of the graphite container at the shelf is
sufficiently large to allow for thermal expansion of the seed,
and that gas flow is directed from below the seed crystal
through a periphery of the seed crystal and to a center of the
volume between ceiling of the graphite container and the back
surface of the seed, to thereby prevent the back surface of the
seed from contacting the ceiling.
(Final Act. 8 (emphasis added)). The Examiner finds, however, that Kondo
teaches “an embodiment of a seed holder wherein three hook-shaped
members (7) are utilized to support a hexagonal-shaped seed crystal (3) at
three comers such that a volume is defined between a back surface of the
seed (3) and the lid member (lc)” (Ans. 9 (citing Kondo Figs. 3A—B; || 51—
53)). The Examiner further finds that “unconstrained comers of the seed
crystal (3) are free to expand as a result of thermal expansion” (Ans. 9 (see
Kondo Fig. 3B)) and that Kondo’s Figures 6A—B suggest that
The higher pressure within the cmcible main body (la) as
compared to the empty volume located above the seed crystal
(3) will necessarily lead to at least some Si and C species being
directed to flow from below the seed crystal, around its
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Appeal 2015-008317
Application 13/963,989
periphery, and to a center of the volume between the seed and
the ceiling of the lid.
(Ans. 9). Likewise, with respect to Kondo’s Figures 3A—B, the Examiner
concludes these figures similarly “read upon the corresponding limitations
recited in claim 1” (Ans. 10). The Examiner further finds that Figures 6A—B
suggest that seed (3) is able to move freely in the horizontal direction during
thermal expansion, unhindered by the internal diameter of shelf (Id),
because the two halves of lid (lb) are pressed together (Final Act. 8, citing
Kondo Figs. 6A—B; || 60-63).
Appellant makes the following principal arguments urging reversal of
Rejection (2): (a) in the applied prior art, the seed is attached to the lid, but
claim 1 requires that the seed is attached to a shelf within the graphite
container (Br. 10-13); (b) the two halves of lid (lb) as found in Kondo’s
Figures 6A—B do not and should not separate during the crystal growth
process to avoid undesirable flow of Si and C source material therebetween
{id. at 11—15); and (c) the applied prior art teaches away from the limitation
“directing gas flow from below the seed crystal through a periphery of the
seed crystal and to a center of the volume between ceiling of the graphite
container and the back surface of the seed” recited in claim 1 {id. at 15—16).
Appellant’s arguments are not persuasive.
With regard to argument (a), the Examiner interprets the limitation “a
shelf of an insulated graphite container” to merely require that the shelf is
present within the graphite container, rather than an extension of the graphite
container itself (Ans. 4). The Examiner then provides a detailed and
supported explanation of why the claim, as so interpreted, reads on the cited
art {id.). Appellant does not challenge these findings. We determine that,
based on the preponderance of the evidence of record, Appellant has not
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Appeal 2015-008317
Application 13/963,989
shown reversible error in the Examiner’s interpretation of the term at issue
in claim 1.
Regarding argument (b), Appellant’s assertions are incomplete
because they do not address all of the Examiner’s findings with respect to
Kondo’s teachings (see, e.g., Ans. 4, 9). Even assuming that the Examiner’s
findings with respect to Kondo’s Figures 6A—B are inaccurate, the Examiner
has provided a detailed explanation of why a person of skill in the art would
have identified Kondo’s teachings in Figures 3A—B as beneficial and would
have been motivated to use three hook-shaped members to support a
hexagonal-shaped seed crystal at three comers (Ans. 4, 9). Appellant has
not persuasively refuted the Examiner’s explanation of why the combination
of references would have been obvious, particularly with respect to Kondo’s
teachings in Figures 3 A—B. Thus, we are not persuaded by Appellant’s
argument (b).
With respect to Appellant’s argument (c), whether a reference teaches
away from a claimed invention is a question of fact. In re Harris, 409 F.3d
1339, 1341 (Fed. Cir. 2005). For a reference to “teach away,” it must
criticize, discredit, or otherwise discourage the claimed solution. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
In this instance, Appellant’s arguments are not persuasive because
they fail to identify any teaching in the applied prior art that criticizes,
discredits, or discourages “directing gas flow from below the seed crystal
through a periphery of the seed crystal and to a center of the volume
between ceiling of the graphite container and the back surface of the seed”
as claimed. Implementation of Kondo’s three hook-shaped members to
support a hexagonal-shaped seed crystal at three comers, as the Examiner
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Application 13/963,989
finds (Ans. 9), would have facilitated a method of forming an SiC crystal in
which at least some Si and C species are directed to flow from below the
seed crystal, around its periphery, and to a center of the volume between the
seed and the ceiling of the lid. Thus, Appellant’s argument (c) is not
persuasive.
Accordingly, we determine that Appellant has not shown reversible
error in the obviousness rejection over Fujimoto and Kondo, and we affirm
Rejection (2). Moreover, as Appellant has not offered separate substantive
arguments regarding error in the rejections of dependent claims 3, 4, and 5
(Br. 16), we also affirm Rejections (3), (4), and (5).
CONCLUSION
We AFFIRM the rejection of claims 1, 2, and 27—29 under 35 U.S.C.
§ 103(a) as unpatentable over Fujimoto in view of Kondo.
We AFFIRM the rejection of claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Fujimoto in view of Kondo, and further in view of
Kinoshita.
We AFFIRM the rejection of claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Fujimoto in view of Kondo, Kinoshita, and further in view
of Leonard.
We AFFIRM the rejection of claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Fujimoto in view of Kondo, and further view of Vodakov.
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Appeal 2015-008317
Application 13/963,989
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)(l)(iv).
AFFIRMED
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