Ex Parte Oshima

Patent Trial and Appeal Board

Feb 28, 2014

11397931 (P.T.A.B. Feb. 28, 2014)

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.
11/397,931 04/05/2006 Yuichi Oshima PHCF-06005 4819
21254 7590 03/03/2014
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
KIM, JAY C
ART UNIT PAPER NUMBER
2815
MAIL DATE DELIVERY MODE
03/03/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YUICHI OSHIMA
____________

Appeal 2011-007893
Application 11/397,931
Technology Center 2800
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

DECISION ON APPEAL

Appeal 2011-007893
Application 11/397,931

2
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 3, 7, and 9. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
Claim 1 is representative of the subject matter on appeal and is set
forth below (emphasis in bold):
1. A nitride-based semiconductor substrate, comprising:
a substrate comprising a nitride-based semiconductor,
wherein the substrate comprises:
a diameter of 25 mm or more;
a thickness of 250 micrometers or more;
a dislocation density of 1 x 107 cm-2 or less;
an oxygen impurity concentration of 1016 cm-3 or less;
an n-type carrier concentration in a range of 1.2 x 1018 cm-3 to 3
x 1019 cm-3; and
a thermal conductivity in a range of 1.2 W/cmK to 3.5 W/cmK.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Vaudo et al. (Vaudo ‘079) US 6,596,079 B1 Jul. 22, 2003
Vaudo et al. (Vaudo ‘310) US 2005/0009310 A1 Jan. 13, 2005
Motoki et al. (Motoki ‘234) US 2005/0092234 A1 May 5, 2005

Motoki et al. (Motoki), Growth and characterization of freestanding GaN
substrates 237-239 J. CRYSTAL GROWTH 912-921 (2002).
Appellant cites to an article entitled Front Line of Single Crystal
Development, Waseda University Open Seminar dated Friday, November
12, 2004, listed as Exhibit 2 in the Evidence Appendix.

Appeal 2011-007893
Application 11/397,931

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THE REJECTION1
Claims 1, 3, 7, and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Motoki ’234 in view of Vaudo ’310, further
evidenced by Vaudo ’079 and further in view of Motoki.

ANALYSIS
Issue: Did the Examiner err in determining that the applied art
suggests the claimed subject matter, in particular the aspect of claim 1
pertaining to a nitride-based semiconductor substrate, wherein the substrate
comprises, inter alia, a dislocation density of 1 x 107 cm-2 or less?
We answer this question in the affirmative and REVERSE.
The Examiner finds that Motoki ‘234 (paras. [0240] and [0243] of
Motoki ‘234) teaches a dislocation density of 1 x 107 cm-2 or less in regions
Z and Y (paras. [0250]-[0253] of Motoki ‘239). Ans. 4. Appellant submits
that this element of claim 1 (among other elements of claim 1) is not met by
the applied art, beginning on page 25 of the Brief. More specifically,
Appellant argues that the Examiner recognizes that this teaching is of only
the Z and Y regions of the substrate, whereas their claim 1 requires that the
substrate (not part of the substrate) has a dislocation density of 1 x 107 cm-2
or less. Reply Br. 4-5.
Beginning on page 10 of the Answer, the Examiner submits that
properties, such as the claimed dislocation density value, have not been
shown by Appellant to be uniform. The Examiner refers to Appellant’s
Declaration filed on April 19, 2010 in an effort to support this position. Ans.

1 The Examiner has withdrawn all 35 U.S.C. 112 rejections. Ans. 3.
Appeal 2011-007893
Application 11/397,931

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10-11. The Examiner also submits that measurements of such properties can
show a different result because of vertical variations in a growth direction,
for example. Ans. 11. Hence, the Examiner questions the uniformity of the
claimed dislocation density value (other values are also mentioned by the
Examiner, but we can focus on the dislocation density value property for
purposes of resolving the issue in this appeal). Ans. 10-12.
However, Appellant explains that standard tests are used to measure
dislocation density of a substrate. Appellant’s own Specification discloses
that the dislocation density of a substrate is measured by the cathode
luminescence method. Spec. p. 18, ll. 24-26. Appellant’s Declaration (on
pages 3-4) describes how the dislocation density is measured by use of the
cathode luminescence method. Appellant explains that because Motoki ‘234
teaches a dislocation density of 1 x 107 cm-2 or less only in regions Z and Y
(as admitted by the Examiner), then the substrate of Motoki ‘234 does not
satisfy the claimed element of a substrate having a dislocation density of 1 x
107 cm-2 or less, because only regions Z and Y of the Motoki ‘234 substrate
meet this claim range, and therefore there are other regions of Motoki ‘234’s
substrate that have values outside the claimed range. Reply Br. 5. We agree
for the reasons provided by Appellant as discussed therein.
We add that it appears that the Examiner’s interpretation of claim 1
regarding the claimed dislocation density value is distorted because of his
position that the uniformity of Appellant’s dislocation density value is
questionable. We need not address this aspect of the Examiner’s position
(uniformity of the dislocation density of the substrate) because, as Appellant
explains, the claim requires that the substrate must satisfy the test
Appeal 2011-007893
Application 11/397,931

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requirement of having a dislocation density of 1 x 107 cm-2 or less [when
measured using the cathode luminescence method]. Because the Examiner
recognizes that Motoki ‘234 teaches a dislocation density of 1 x 107 cm-2 or
less for only regions Z and Y, then the claimed element is not suggested by
Motoki ‘234 (the Examiner does not rely upon the other cited references for
this claimed element). As such, the Examiner does not direct us to evidence
in the record that suggests a substrate having the claimed dislocation density
value. It is well settled that the Examiner bears the initial burden of
presenting a prima facie case of unpatentability. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). We are persuaded that the Examiner has failed
to do so in this case.
In view of the above, we reverse the rejection. The other applied
references do not cure this deficiency (as discussed above) of Motoki’ 234.
The decision of the Examiner is reversed.

REVERSED

cdc