Ex Parte Ortner et al

Patent Trials and Appeals Board

Apr 17, 2019

14711881 - (D) (P.T.A.B. Apr. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/711,881 05/14/2015 Andreas Ortner
27623 7590 04/18/2019
OHLANDT, GREELEY, RUGGIERO & PERLE, LLP
ONE LANDMARK SQUARE, 10TH FLOOR
STAMFORD, CT 06901
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2133.276USX 5892
EXAMINER
FRANKLIN, JODI COHEN
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
04/18/2019 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 ANDREAS ORTNER, ANDREAS HABECK,
KLAUS GERSTNER, and GEORG HASELHORST
Appeal2018-006160
Application 14/711,881
Technology Center 1700
Before LINDA M. GAUDETTE, LILAN REN, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1-8 and 12-16. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We REVERSE.
STATEMENT OF THE CASE
Appellant claims a method for generating a series of line-shaped
1 Appellant is the applicant, Schott AG, which, according to the Appeal
Brief, is the real party in interest. Appeal Brief filed December 18, 2017
("App. Br."), 1.
Appeal2018-006160
Application 14/711,881
damage formations in a transparent workpiece. App. Br. 2. Claim 1, the
sole pending independent claim, illustrates the subject matter on appeal, and
is reproduced below with emphasis added to highlight contested subject
matter:
1. A method for generating a series of line-shaped damage
formations in a transparent workpiece along a line, comprising:
providing a laser processing device including an ultra-
short pulsed laser and a focusing optic system, the laser
processing device illuminating laser radiation with a
wavelength that is within a transmission range of the
workpiece;
providing a workpiece table and a displacement device
for directing the focusing optic system onto the workpiece
during generation of the damage formations and incrementally
displacing the focusing optic system and the workpiece table
relative to each other according to the line; and
emitting, while the focusing optic system is directed to
each location of the damage formations, laser pulses in two or
more successive periods at the workpiece while the workpiece
is exposed to a protective gas atmosphere, wherein the laser
pulses have an energy during each period that is dimensioned
so that a corresponding filament formation is produced in the
workpiece, and wherein the successive periods produce
consecutively aligned filament formations extending
transversely through the workpiece.
App. Br. 8 (Claims Appendix) ( emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action entered May 12, 2017 ("Final Act."), and maintains the rejections in
the Examiner's Answer entered March 27, 2018 ("Ans."):
I. Claims 1-4, 7, 8, and 12-16 under 35 U.S.C. § 103(a) as
unpatentable over Hosseini et al. (WO 2012/006736 A2, published January
19, 2012) in view of Yamazaki (US 2009/0098710 Al, published April 16,
2009); and
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Application 14/711,881
II. Claims 5 and 6 under 35 U.S.C. § 103(a) as unpatentable over
Hosseini in view of Yamazaki and Gamer et al. (US 2012/0211923 Al,
published August 23, 2012).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we reverse the Examiner's rejections of
claims 1-8 and 12-16 under 35 U.S.C. § 103(a) for the reasons set forth in
the Appeal Brief and below.
Independent claim 1 requires the recited method of generating a series
of line-shaped damage formations in a transparent workpiece to include the
step of emitting laser pulses at a workpiece while the workpiece is exposed
to a protective gas atmosphere.
The Examiner finds that Hosseini discloses a method of generating a
series of line-shaped damage formations in a transparent workpiece that
includes emitting laser pulses at the workpiece, but "does not disclose the
atmosphere in which the laser processing is carried out." Final Act. 3-4
( citing Hosseini Fig. la; pg. 12). The Examiner relies on Yamazaki to
address this feature, and finds that "Yamazaki discloses a method of
separating a transparent substrate using a laser where a nitrogen atmosphere
... is provided to suppress generation of a crack thus providing a controlled
crack." Final Act. 4. ( citing Yamazaki ,i,i 227-228). The Examiner
concludes that "[i]t would be obvious to provide this atmosphere [in
Hosseini's method] in order to provide a controlled crack." Final Act. 4.
On this appeal record, however, the Examiner does not provide a
sufficient factual basis to support the Examiner's conclusion of obviousness,
for reasons expressed by Appellant and discussed below.
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Appeal2018-006160
Application 14/711,881
Hosseini discloses a method of forming laser filaments in a
transparent substrate that comprises irradiating the substrate with one or
more pulses of a focused laser beam having an energy and duration selected
to produce a filament within the substrate, and translating the substrate
relative to the focused laser beam while continuing to irradiate the substrate
to produce additional filaments along a straight path. P. 5, 11. 9-17; p. 11, 1.
23-p. 12, 1. 9; Fig. 1. Hosseini discloses that "[o]nce a filamentation array is
formed in the transparent substrate, only small mechanical pressure is
required to cleave the substrate into two parts on a surface shape that is
precisely defined by the internal laser-filamentation curtain." P. 14, 11. 19-
21. Hosseini discloses that this laser filamentation method "offers a new
direction for internal laser processing of transparent materials that can avoid
... crack generation." P. 14, 11. 3-6. Hosseini explains that '[t]he laser-
scribed facets [produced by the method] typically show no or little
cracking[,] and microvoids or channels are not evident along the scribed
zone." P. 14, 11. 22-23; see also p. 15, 11. 19-22 ("[t]he cleaved facets ...
show minimal or no microcracks"), p. 18, 1. 1 ("smooth and crack free
facets").
Yamazaki discloses a method of manufacturing a semiconductor
device that involves forming a single-crystal semiconductor layer over an
insulating layer, bonded to a supporting glass substrate. ,i,i 2, 10, 141; Fig.
4A. Yamazaki discloses producing the single-crystal semiconductor layer
by forming a damaged region in a single crystal semiconductor substrate,
and separating the substrate along the damaged region. ,i,i 165, 185-186;
Figs. 4B, 4E. Yamazaki discloses that formation of the damaged region and
the separation process cause a crystal defect in the resulting single-crystal
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Appeal2018-006160
Application 14/711,881
semiconductor layer, and also cause the layer to have a non-planar surface.
,i 202. Yamazaki discloses correcting the crystal defect, and improving the
planarity of the single-crystal semiconductor layer surface, by irradiating the
layer with a laser beam while spraying it with heated nitrogen gas to melt the
irradiated region. ,i,i 27,202,203,205; Fig. 5A. Yamazaki discloses
cooling the melted portion of the single-crystal semiconductor layer to re-
recrystallize it and correct the crystal defect. ,i,i 205, 207-208.
Yamazaki discloses that spraying heated nitrogen gas produces "a
nitrogen gas atmosphere" in the irradiated region. ,i 229. Yamazaki
discloses that a "nitrogen atmosphere and a vacuum state are more effective
than the atmosphere in improving planarity of the single crystal
semiconductor layer. In addition, these atmospheres are more effective than
the atmosphere in suppressing generation of a crack." ,i 227 (reference
numeral omitted).
As Appellant points out (App. Br. 3-4; Reply Br. 2), Yamazaki does
not use laser irradiation to form filaments in a transparent substrate as
disclosed in Hosseini, but, instead, irradiates a damaged single crystal
semiconductor layer to recrystallize it and improve the planarity of its
surface. The Examiner does not adequately address the differences between
Yamazaki's and Hosseini's methods, and explain why, despite the numerous
differences, the relied-upon disclosures in Yamazaki and Hosseini would
have provided one of ordinary skill in the art with an apparent reason to
modify Hosseini' s method so as to arrive at the method of claim 1.
Specifically, the Examiner does not adequately explain why one of ordinary
skill in the art would have been led to use a nitrogen gas atmosphere to form
laser filaments in a transparent substrate as disclosed in Hosseini, when
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Appeal2018-006160
Application 14/711,881
Yamazaki discloses that using a nitrogen gas atmosphere during
recrystallization of a damaged single crystal semiconductor layer enhances
the effectiveness of planarization of the surface of the layer. Belden v. Berk-
Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) ("[O]bviousness concerns
whether a skilled artisan not only could have made but would have been
motivated to make the combinations or modifications of the prior art to
arrive at the claimed invention.").
Moreover, although the Examiner asserts that "Hosseini desires to
avoid the generation of unwanted cracking ... and Yamazaki provides a
solution of a nitrogen atmosphere ... to suppress the generation of a crack
during laser processing" (Ans. 7), as discussed above, Hosseini repeatedly
discloses that Hosseini's method prevents formation of unwanted cracks and
microcracks. On this appeal record, the Examiner does not provide any
evidence that indicates or would have suggested that use of a nitrogen gas
atmosphere during Hosseini' s method would suppress generation of cracks
to a greater extent than already achieved by Hosseini' s method.
Consequently, the Examiner's assertion that one of ordinary skill in
the art would have been led to use a nitrogen gas atmosphere to avoid
generation of cracks as disclosed in Yamazaki when performing Hosseini' s
method of forming filaments in a transparent substrate lacks rational
underpinning, in view of Hosseini's repeated disclosure that Hosseini's
method already prevents formation of unwanted cracks and microcracks.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) ("[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.").
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Appeal2018-006160
Application 14/711,881
Accordingly, on this appeal record, the Examiner does not provide a
sufficient factual basis to establish that the combined disclosures of Hosseini
and Yamazaki would have suggested a method of generating a series of line-
shaped damage formations in a transparent workpiece that includes emitting
laser pulses at a workpiece while the workpiece is exposed to a protective
gas atmosphere, as required by claim 1. We accordingly do not sustain the
Examiner's rejection of claim 1, and rejections of claims 2-8 and 12-16,
which each depend from claim 1, under 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner's rejections of claims 1-8 and 12-16 under
35 U.S.C. § 103(a).
REVERSED
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