Ex Parte Nakamura et al

Board of Patent Appeals and Interferences

Sep 29, 2005

09732799 (B.P.A.I. Sep. 29, 2005)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KAZUO NAKAMURA, KENJI HORIUCHI,
SATOSHI YAMASHITA and KAZUHIRO KATAOKA
____________
Appeal No. 2005,1458
Application No. 09/732,799
____________
ON BRIEF
____________
Before WARREN, KRATZ and DELMENDO, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal to
allow claims 17-19 and 21, which are all of the claims pending in
this application.
BACKGROUND
Appellants' invention relates to a boron doped diamond
product and a method of manufacturing same. An understanding of
the invention can be derived from a reading of exemplary claims
17 and 18, which are reproduced below.
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1 The examiner also refers to another reference at page 3 of
the answer as representing prior art of record. However, the
examiner does not rely on that other reference in rejecting the
claims. Thus, we do not consider that other listed reference in
assessing the propriety of the rejection before us.
17. A single crystal diamond p-type semiconductor having a
thermal conductivity of from about 26-31 W/cmoK and consisting of
at least 99.5% isotopically pure 12C or 13C and boron in an amount
not exceeding 100 ppm.
18. A method of manufacturing a single crystal diamond p-
type semiconductor having a thermal conductivity of from about
26-31 W/cmoK and a boron content not exceeding 100 ppm comprising
the steps of:
providing a carbonaceous material containing isotopically
purified 12C or 13C;
providing a flux containing a nitrogen getter;
adding boron into the carbonaceous material or/and the flux,
or around the carbonaceous material and the flux; and
diffusing the carbonaceous material into the flux under a
high temperature and pressure to form a boron-doped single
crystal diamond p-type semicconductor on a seed crystal diamond.
The prior art references of record1 relied upon by the
examiner in rejecting the appealed claims are:
Tsuji et al. (Tsuji) 5,328,548 Jul. 12, 1994
Anthony et al. (Anthony) 5,451,430 Sep. 19, 1995
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2 The examiner’s reference to claims 22-32 as rejected
claims at page 3 of the answer is taken as a word processing or
typographical error. Similarly, the examiner’s reference to
claim 23 at page 4 of the answer and claims 23 and 27 at page 6
of the answer are construed as repetitive errors that do not
prejudice appellants. In an advisory action mailed April 17,
2003, the examiner noted that claims 17-19 and 21 remain rejected
and indicated that an amendment after final (ostensibly the
second after final amendment filed April 01, 2003 that canceled
claims 20 and 22-32) would be entered. See page 1 of the
supplemental brief filed April 01, 2003 under the caption “STATUS
OF CLAIMS.”
Claims 17-19 and 21 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Tsuji and Anthony.2
We refer to the brief and reply brief and to the answer for
a complete exposition of the opposing viewpoints expressed by
appellants and the examiner concerning the issues before us on
this appeal.
OPINION
Having carefully considered each of appellants* arguments
set forth in the brief and reply brief, appellants have not
persuaded us of reversible error on the part of the examiner in
rejecting product claim 17. Accordingly, we will affirm the
examiner’s rejection of claim 17 for substantially the reasons
set forth by the examiner in the answer and as further discussed
below. We reverse the examiner’s rejection of method claims 18,
19 and 20. Our reasoning follows.
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Tsuji is concerned with the good heat conduction properties
of diamond that has lower amounts of carbon-13 than occurs in
naturally formed diamond. Tsuji provides a method of
synthesizing single diamond crystals using a carbon source
containing at least 99.9 atomic percent carbon-12. Tsuji teaches
that the carbon source is graphitized to enhance the
crystallinity of the carbon prior to synthesizing single diamond
crystals as a product via a temperature difference method. Tsuji
informs one of ordinary skill in the art that the synthetic
diamond made should be free from metallic inclusions and
irregular shaped crystals and that a further improvement can be
realized if nitrogen impurity is eliminated. See, e.g., column
3, line 2-21 and column 4, line 39 through column 5, line 4 of
Tsuji.
The examiner acknowledges that Tsuji does not disclose
adding boron into the carbonaceous material or flux (metal
solvent) used in forming a synthetic diamond by the method
disclosed therein so as to form a boron-doped diamond, as
required in appellants’ appealed method claims. See answer, page
3.
Anthony (column 1, lines 11 and 12) teaches that using a
chemical vapor deposition (CVD) synthetic diamond forming method
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typically results in large stress cracks being present in the
product. Anthony (column 6, lines 58-62) discloses using boron-
doping in such a CVD synthetic diamond manufacturing method to
improve oxidation resistance and reduce intrinsic stress in a
chemical vapor deposited (CVD) diamond.
The examiner relies on Anthony in combination with Tsuji
stating that “it would have been obvious to one of ordinary skill
in the art to modify the Tsuji et al process by the teachings of
the Anthony et al reference to dope the diamond in order to
enhance the properties of the diamond” (answer, page 3).
On this record, we agree with appellants that the examiner
has not substantiated why one of ordinary skill in the art would
have been led to turn to Anthony’s teachings to modify the
disparate temperature difference method employed by Tsuji by
including boron as an additive for forming diamonds, especially
in the face of Tsuji’s teachings regarding the avoidance of metal
inclusions in the formation of diamonds with high heat resistance
by the method disclosed therein. In this regard, the examiner
has not substantiated that stress cracking is associated with
synthetic diamonds formed by the temperature difference method of
Tsuji or that low oxidation resistance was an issue that needed
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to be addressed in forming the diamond product of Tsuji by a
temperature difference method.
It is well settled that the mere fact that prior art may be
modified to reflect features of the claimed invention does not
make the modification obvious unless the desirability of such
modification is suggested by the prior art. Our reviewing court
has repeatedly cautioned against employing hindsight by using the
appellants’ disclosure as a blueprint to reconstruct the claimed
invention from the isolated teachings of the prior art. See,
e.g., Grain Processing Corp. v. American Maize-Products Co., 840
F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988). From our
perspective, the examiner’s proposed combination of the applied
references appears to be premised on impermissible hindsight
reasoning.
Because the examiner has not presented a prima facie case of
obviousness, it follows that we will reverse the examiner’s
obviousness rejection of method claims 18, 19 and 21.
Our disposition of the examiner’s obviousness rejection of
product claim 17 is another matter. Product claim 17 is not
limited by the process by which it is made. Here, appellants
acknowledge that Anthony discloses an isotopically pure diamond
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3 Also, given that the diamond of Anthony is doped with
boron, it would reasonably be expected that the boron doped
diamond of Anthony would possess the claimed functional
characteristic of being a p-type semiconductor. Compare page 3,
lines 1-4 of appellants’ specification wherein appellants
acknowledge that boron doping of diamond results in the doped
diamond being a p-type semiconductor.
film that is doped with boron in an amount between 1-4,000 parts
per million (reply brief, page 2).
Anthony teaches that single diamond crystals may be grown
and that the thermal conductivity of isotopically pure diamond
may be as high as 33 W/cm-K. See, e.g., column 3, lines 7-28 of
Anthony. Anthony teaches that boron can be added to the diamond
in an atomic percent amount of between 1-4000 ppm with the most
preferred films containing less than 100 parts per million of
impurities and intentional additives.3 See, e.g., column 6, line
58 through column 7, line 1 and column 2, line 68 through column
7, line 1 of Anthony. In this regard, it is well settled that
when ranges recited in a claim overlap with ranges disclosed in
the prior art, a prima facie case of obviousness typically exists
and the burden of proof is shifted to the applicants to show that
the claimed invention would not have been obvious. In re
Peterson, 315 F.3d 1325, 1329-30, 65 USPQ2d 1379, 1382-83 (Fed.
Cir. 2003); In re Geisler, 116 F.3d 1465, 1469, 43 USPQ2d 1362,
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4 We need not review the teachings of Tsuji because we find
that the teachings of Anthony are sufficient to make out a prima
facie case of obviousness.
1365 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578, 16
USPQ2d 1934, 1936-37 (Fed. Cir. 1990).4
Appellants (reply brief, pages 2 and 3) seemingly argue that
Anthony adds the boron for a different purpose than appellants
and refer to Examples on pages 15 and 16 of their specification
to apparently suggest that an amount of boron less than 100 parts
per million (ppm) would not be suggested by Anthony. However, in
reaching the conclusion that the claimed subject matter is prima
facie obvious over the combined teachings of the applied
references, we also note that the prior art references in
question need not provide all of appellants* reasons, such as the
alleged high thermoconductivity and semiconducting properties, to
establish a prima facie case of obviousness. See In re Kemps, 97
F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996) (the
motivation to combine features need not be identical to that of
appellant to establish a prima facie case of obviousness).
Furthermore, to the extent appellant may have recognized
another potential advantage of the claimed diamond that would
have arisen by otherwise following the teachings of the prior
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art, that recognition does not necessarily form a basis for
patentability. See In re Woodruff, 919 F.2d at 1577-1578, 16
USPQ2d at 1936 (Fed. Cir. 1990). In any event, in the present
case, Anthony expressly suggests that the isotopically pure
diamond would have higher thermal conductivity than a diamond not
possessing that isotopic purity. See, e.g., column 3, lines 20-
23 of Anthony. Moreover, appellants acknowledge that it is known
that impurity addition to diamond decreases thermal conductivity.
Thus employing less than 100 ppm total impurities and additives,
such as 5 ppm boron additive, as reasonably suggested in the
paragraph bridging columns 6 and 7 of Anthony would have been
expected to yield higher thermal conductivities than employing
the upper limit of 4,000 ppm boron. As expressed in footnote 3
above, the p-type semiconducting properties are also expected.
To the extent appellants (brief, page 7) are asserting that
the examples presented in the specification establish unexpected
results for the claimed synthetic diamond, we note that
appellants bear the burden of establishing that the claimed
subject matter in fact imparts unexpected properties. See In re
Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972). In our
opinion, appellants have not met the burden of establishing that
the reported test results set forth in the specification for the
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claimed product would have been truly unexpected to a person of
ordinary skill in the art given the teachings of Anthony as
outlined above.
It is noted that appealed claim 17 is not limited to the
specific method of preparing a diamond and to the specific
amounts of isotopic purity (99.95% carbon-12) and minimum amount
of boron doping 3-4 ppm, as tested. Indeed, no test results for
isotopically pure carbon-13, which is within the scope of claim
17, were furnished. Moreover the minimum amount of boron doping
within the range claimed (1 ppm) has not been tested in
appellants’ specification at pages 12-21 and as reported in
Tables 2-5. Nor have appellants explained in their briefs how
the comparative examples 1-4 (page 15 of the specification) and
the results set forth in table 5 (page 15 of the specification)
are representative of the closest applied prior art.
Appellants simply have not met the burden of explaining how
the results reported in the specification can be extrapolated
from the limited instances presented so as to be guaranteed as
attainable through practicing the invention as broadly claimed.
It is well established that the evidence relied on to establish
unobviousness must be commensurate in scope with the claimed
subject matter. See In re Kerkhoven, 626 F.2d 846, 851, 205 USPQ
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1069, 1072-1073 (CCPA 1980) and In re Clemens, 622 F.2d 1029,
1035, 206 USPQ 289, 296 (CCPA 1980).
Hence, we are not satisfied that the evidence of record
offered for comparison demonstrates results that are truly
unexpected when compared with the closest prior art and that are
commensurate in scope with the claims.
In conclusion, based on the foregoing and the reasons set
forth by the examiner, it is our judgment that the evidence of
obviousness presented by the examiner outweighs the evidence of
nonobviousness advanced by appellants. Accordingly, we shall
sustain the examiner’s § 103(a) rejection of claim 17.
CONCLUSION
The decision of the examiner to reject claims 18, 19 and 21
under 35 U.S.C. § 103(a) as being unpatentable over the teachings
of Anthony and Tsuji is reversed. The decision of the examiner
to reject claim 17 under 35 U.S.C. § 103(a) as being unpatentable
over the teachings of Anthony and Tsuji is affirmed.
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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
CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
PFK/dal
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