Ex Parte Ortner et alDownload PDFPatent Trials and Appeals BoardApr 17, 201914711881 - (D) (P.T.A.B. Apr. 17, 2019) Copy Citation 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 2 Appeal2018-006160 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. 3 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 4 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 5 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."). 6 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 7 Copy with citationCopy as parenthetical citation