Ex parte Mashburn

Board of Patent Appeals and Interferences

Oct 27, 2000

08472833 (B.P.A.I. Oct. 27, 2000)

Application for patent filed on June 7, 1995. According to appellant, this application is a1
divisional application of U.S. Application Serial No. 08/278,212 which was filed on July 21, 1994.
The opinion in support of the decision being entered today was not written for publication and is not
binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DOUGLAS N. MASHBURN
_____________
Appeal No. 1998-1068
Application No. 08/472,8331
______________
ON BRIEF
_______________
Before KIMLIN, WALTZ, and TIERNEY, Administrative Patent Judges.
TIERNEY, Administrative Patent Judge.
Decision on Appeal
This is an appeal under 35 U.S.C. § 134 from the examiner’s refusal to allow
claims 19 and 29-34. We reverse the examiner’s rejection.
Appeal No. 1998-1068
Application No. 08/472,833
2
The Invention
The invention relates to a method for forming thin films in which a deposition or material
addition environment is separate from a film crystallization or growth environment. (Specification, p. 1,
lines 2-8). By separating the environments each process can be individually optimized. (Specification,
p. 4, lines 13-15). A copy of the claims under appeal is set forth in the appendix to the Appellant’s
Brief. Independent claim 19 is illustrative of the invention and reads as follows:
19. A method for forming thin films comprising the steps of:
containing a target material in a first container having an interior environment maintained
at a first temperature and pressure;
containing a substrate in a second container having an interior environment maintained
at a second temperature and pressure; and

periodically exposing the substrate to the environment of the first container while
simultaneously exposing the target to a laser beam of sufficient energy to form an ablation plume
in the first container that extends into the second chamber to thereby deposit material from the
plume onto the substrate.
We note that claim 19 recites “extends into the second chamber.” While it is clear that the
language “the second chamber” refers to the “second container,” appellant may find it advisable to
rewrite the claim such that the language of the claim is internally consistent.
Appeal No. 1998-1068
Application No. 08/472,833
3
The References
The prior art references of record relied upon by the examiner in rejecting the appealed claims
are:
Behn et al. (“Behn”) 4,508,049 Apr. 2, 1985
Schultz et al., "Preparation and Characterization of Pulsed Laser Deposited HTSC Film"; SPIE, Vol.
1187, p. 204-215. (1989) (“Schultz”)
The Rejection
Claims 19 and 29-34 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Behn
alone or in view of Schultz.
1. The Behn Reference
Behn describes the production of electrical components which have alternate metal and
polymer layers carried on a substrate. (Abstract). The electrical components are produced by fixing
the substrates on a rotatable drum and rotating the drum through first and second vacuum chambers
which are air-locked with respect to each other. (Abstract). In the first chamber the substrate is
coated with a metal by a vapor deposition process, for example, by vaporizing a metal with an electron
beam. (Col. 1, line 66 to col. 2, line 2 and col. 4, lines 31-34). A glow discharge polymer coating is
applied in the second vacuum chamber. (Col. 4, lines 34-37). The air locks preferably have a port
which allows for the evacuation of residual monomer gas and/or vaporized metal which respectively
Appeal No. 1998-1068
Application No. 08/472,833
4
diffuse through a narrow gap between the air locks and the vacuum chambers. (Col. 3, lines 65-68).
2. The Schultz Reference
According to Schultz, high quality, thin superconductor films can be produced by several
techniques including electron beam co-deposition, sputtering, molecular beam epitaxy and laser
deposition. (Schultz, p. 204). For many electronic applications, multilayer structures of
superconducting and insulating layers are needed. To form such multilayer structures, Schultz describes
the use of a target exchanger which provides three different rotating targets that can be selectively
moved into the laser beam. (Schultz, p. 208).
Opinion
The examiner has rejected claims 19 and 29-34 as unpatentable under 35 U.S.C. § 103(a)
over Behn alone or in view of Schultz. Behn is relied upon for its teaching of a chamber having multiple
vacuum areas to create zones of higher and lower pressure for use in different deposition processes.
(Examiner’s Answer, p. 4). Behn is also relied upon for its description of substrates mounted on a
rotating drum which passes through different zones, one of which is a lower pressure zone for vapor
deposition of a metal onto the substrate. According to the examiner, the main difference between Behn
and the claimed invention is Behn’s generic teaching of vapor deposition and exemplification of an
electron beam whereas appellant’s claims recite the use of a laser beam to form an ablation plume of a
Appeal No. 1998-1068
Application No. 08/472,833
5
target material. (Examiner’s Answer, pages 4-5). The examiner concludes, however, that laser beams
and electron beams are conventional vapor deposition methods and that it would have been obvious to
one skilled in the art to use a laser beam in Behn’s process because of Behn’s generic disclosure of a
vapor deposition process and because analogous results would have been expected. (Examiner’s
Answer, p. 5). Alternatively, the examiner cites Schultz as teaching that electron beam evaporation and
laser deposition are known alternative vapor deposition techniques. (Examiner’s Answer, p. 5).
To establish a prima facie case of obviousness, the prior art reference (or references when
combined) must teach or suggest all the claim limitations. See In re Wilson, 424 F.2d 1382, 1385,
165 USPQ 494, 496 (CCPA 1970) (“All words in a claim must be considered in judging
the patentability of that claim against the prior art.”). Furthermore, any motivation to modify the prior
art references must flow from some teaching in the art that suggests the desirability or incentive to make
the modification needed to arrive at the claimed invention. In re Napier,
55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed Cir. 1995); In re Gorman, 933 F.2d 982, 986-87,
18 USPQ2d 1885, 1888-89, (Fed. Cir. 1991) (“When it is necessary to select elements of various
teachings in order to form the claimed invention, we ascertain whether there is any suggestion or
motivation in the prior art to make the selection made by the applicant. [Citations omitted] . . . The
extent to which such suggestion must be explicit in, or may be fairly inferred from, the references, is
decided on the facts of each case in the light of the prior art and its relationship to the applicant’s
invention.”).
Appeal No. 1998-1068
Application No. 08/472,833
6
As stated above, appellant’s claims are directed to a method for forming a thin film. The
claimed method involves forming an ablation plume in a first container that extends into a
second container to thereby deposit material from the plume onto a substrate. In contrast, Behn
discloses a method where a substrate is transported from a vapor deposition chamber to a glow
discharge chamber. Behn fails to describe, let alone mention, a method where the vapor deposition
material is transported from a first chamber to a second chamber such that the deposition material is
thereby deposited onto the substrate in the second chamber. Indeed, Behn arranges for the evacuation
of residual vaporized metal such that the deposition metal does not extend into and deposit upon a
substrate located in a second chamber. (Behn, col. 3, lines 53-68). Accordingly, while Behn
transports a substrate from one container to another, Behn fails to suggest appellant’s claimed transfer
of a deposition material from one container to another.
Schultz, like Behn, fails to describe or suggest a method where a deposition material is
transported from one container to another. Failing to describe the transfer of a deposition material from
a first container to a second container, Behn, alone or in combination with Schultz, would not have
rendered appellant’s claimed invention obvious to one skilled in the art.
Appeal No. 1998-1068
Application No. 08/472,833
7
Conclusion
The decision of the examiner to reject claims 19 and 29-34 as unpatentable under
35 U.S.C. § 103(a) over Behn alone or in view of Schultz is reversed.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
THOMAS A. WALTZ )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MICHAEL P. TIERNEY )
Administrative Patent Judge )
MPT:lmb
Appeal No. 1998-1068
Application No. 08/472,833
8
EDWARD A. PENNINGTON
MORGAN & FINNEGAN
SUITE 960
1299 PENNSYLVANIA AVENUE, NW
WASHINGTON, DC 20004