Ex Parte RYO et al

Patent Trial and Appeal Board

Sep 28, 2016

13428395 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/428,395 03/23/2012
37013 7590 09/30/2016
Rossi, Kimms & McDowell LLP
20609 Gordon Park Square
Suite 150
Ashburn, VA 20147
FIRST NAMED INVENTOR
MinaRYO
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.
FUJI-0675 1433
EXAMINER
GREGORIO, GUINEVER S
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
09/30/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
mail@rkmllp.com
EOfficeAction@rkmllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MINA RYO, YOSHIYUKI YONEZA WA, and TAKESHI SUZUKI 1
Appeal2015-000702
Application 13/428,395
Technology Center 1700
Before CHUNG K. PAK, PETER F. KRATZ, and N. WHITNEY WILSON,
Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision2 finally rejecting claims 1 and 3-1 7, which are all of the
pending claims in the above-identified application. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is said to be Fuji Electric Co., Ltd. Appeal Brief filed
April 4, 2014 ("App. Br.") at 2.
2 Final Action entered November 4, 2013 ("Final Act.") at 3-5 and the Examiner's
Answer entered July 31, 2014 ("Ans.") at 3--4.
Appeal2015-000702
Application 13/428,395
STATEMENT OF THE CASE
The subject matter on appeal is directed to "SiC single crystals and
production method thereof. ... " Spec. ,-i 2. The production method
includes dissolving C in a solvent in which a raw material containing
Si, Ti and Ni has been heat-melted, thereby preparing a melt, and
bringing a SiC seed crystal into contact with the melt such that SiC is
supersaturated in the melt in the vicinity of the surface of the Sic seed
crystal, to thereby allow growth of the SiC single crystal on the SiC
seed crystal.
Id. at,-i 15.
Carbon (C) can be dissolved in the solvent "by any method without limitation[']"
including "a method in which C is dissolved out from [a] graphite crucible" or "a
method in which a gas containing C is fed into the crucible[.]" Id at ,-i 25. The
solvent is identified as a molten raw material. Id. "It is preferable that an atomic
ratio of Ti relative to Si [in the molten raw material] satisfies the relation of 0.05 :S
[Ti]/([Si] +[Ti]) :S 0.3." Id at ,-i,-i 16 and 23. "An atomic ratio of the total of Ti and
Ni relative to Si [in the molten raw material] preferably satisfies the relation 0.1 :S
([Ti] + [Ni])/([Si] + [Ti] + [Ni]) :S 0.65." Id. The atomic ratio of Ni relative to Ti
preferably satisfies the relation 0.05 :S [](Ni]/[[Ti] + [Ni]) :S 0.70." Id at ,-i 24.
Although the Specification prefers certain atomic ratios to metals to Si and metal to
metal in relation to Si, it does not indicate any reason for such preference. Id at ,-i,-i
16, 23, and 24.
Details of the appealed subject matter are recited in illustrative claims 1 and
11, which are reproduced below from the Claims Appendix of the Appeal Brief
(with disputed limitations in italicized form):
1. A method for production of a SiC single crystal, comprising:
dissolving C in a solvent in which a raw material containing Si, Ti
and Ni has been heat-melted, thereby preparing a melt; and
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Application 13/428,395
bringing a SiC seed crystal into contact with the melt such that SiC
is supersaturated in the melt in the vicinity of the surface of the SiC
seed crystal, to thereby allow growth of the SiC single crystal on the
SiC seed crystal, wherein an atomic ratio of Ti relative to Si satisfies
the relation 0.05 :S [Ti]/([Si] +[Ti]) :S 0.3.
11. A SiC single crystal produced by dissolving C in a solvent in
which a raw material containing Si, Ti and Ni has been heat-melted,
thereby preparing a melt and bringing a SiC seed crystal into contact
with the melt such that SiC is supersaturated in the melt in the vicinity
of the surface of the SiC seed crystal, to thereby allow growth of the
SiC single crystal on the SiC seed crystal.
App. Br., Claims Appendix 1-2.
The Examiner has maintained, and Appellants seek review of, the rejection
of claims 1, and 3-17 under 35 U.S.C. § 103(a) as unpatentable over the disclosure
of Kazuhiko (JP 2002-356397 A published in the name of Kazuhiko et al. on
December 13, 2002). 3 Final Act. 3-5; Ans. 3-10; App. Br. 2.
DISCUSSION
Upon consideration of the evidence on this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we determine that
a preponderance of the evidence supports the Examiner's determination that
Kazuhiko would have rendered the subject matter recited in claims 1 and 3-17
obvious to one of ordinary skill in the art within the meaning of 35 U.S.C.
§ 103(a). Accordingly, we sustain the Examiner's§ 103(a) rejection of the above
3 Our reference to this Japanese Patent Application publication is to the
corresponding English translation entered into the record by the Examiner on April
5, 2013.
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Application 13/428,395
claims essentially for the reasons set forth in the Final Action and the Answer. We
add the following primarily for emphasis and completeness.
We initially note that Appellants argue claims 1, 4, and 10-17 as a first
group, claims 3 and 5 as a second group, and claims 6-9 as a third group. App. Br.
2-6. To resolve the propriety of the Examiner's§ 103(a) rejection of the claims in
the first group, we can select claim 11, the broadest claim on appeal, pursuant to
37 C.F.R. § 41.37(c)(l)(iv) (2013). We are mindful that claim 11, unlike claim 1,
does not require an atomic ratio of Ti relative to Si and is written in a product-by-
process format. However, in this case, we will address both independent claims 1
and 11 to avoid piecemeal appellate review and in the interest of administrative
and judicial economy. Therefore, for purposes of this appeal, we decide the
propriety of the Examiner's§ 103(a) rejection of all of the claims on appeal on the
basis of claims 1, 3, 9, and 11.
I. Claims 1 and 11
Here, with respect to claims 1 and 11, there is no dispute that:
Kazuhiko ... teaches a method of manufacturing
single crystal silicon carbide which meets the limitation of a method
for production of a SiC single crystal (paragraph 1 ). Kazuhiko ...
teaches melt comprising Si, C and metals such as Fe, Co, Cu, Cr, Ni,
Mn, Ti, Sc, Dy, Er, Ce and AI which meets the limitation of
dissolving C in a solvent in which a raw material containing Si, Ti,
and Ni has been heat-melted, thereby preparing a melt (paragraph 25).
Kazuhiko et al. teaches a SiC single crystal substrate was contacted to
the melt which meets the limitation of bringing a SiC seed crystal into
contact with the melt such that SiC is supersaturated in the melt in the
vicinity of the surface of the SiC seed crystal, to thereby allow growth
of the SiC single crystal on the SiC seed crystal (paragraphs 29
and 30).
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Application 13/428,395
Compare Final Act. 3--4 and Ans. 3 with App. Br. 2-6 and Reply Brief
filed September 30, 2014 ("Reply Br.") at 1-4; see also Kazuhiko
iii! 18-25.
Nor is there any dispute that "Kazuhiko ... teaches Ti:Si=40:60-30:70 [in the
Si-Ti-C triple system,] which meets the limitation of an atomic ratio of Ti
relative to Si [that] satisfies the relation 0.05 :S [Ti]/([Si] + [Ti]) :S 0.3
(paragraph 25)."4 Compare Final Act. 4 and Ans. 3 with App. Br. 2-6 and
Reply Brief filed September 30, 2014 ("Reply Br.") at 1--4; see also
Kazuhiko iJ 25.
Rather, Appellants dispute the Examiner's finding that Kazuhiko
teaches or would have suggested using such Ti/Si ratios in the context of a
quaternary system as recited in claim 1.5 App. Br. 3-5. However, as
correctly found by the Examiner, Kazuhiko teaches adding one or more
metallic elements selected from, inter alia, nickel (Ni) and titanium (Ti) a
raw material containing Si as indicated supra, with the amount of the
metallic metal being added in a metallic element to Si atomic ratio of 20:80-
70:30, regardless of whether one (triple system) or more metals (e.g.,
quaternary system) are added to the raw material containing Si. Ans. 10; see
also Kazuhiko iJ 25. Implicit in this teaching in Kazuhiko is that the atomic
ratio of Ti: Si= 40:60-30:70 described in context of the Si-Ti-C triple system
4 "[T]he equations using the values provided by Kazuhiko ... are
[0.4]/([0.6]+[0.4])= 0.4/1.0= 0.4 and [0.3]/([0.7]+[0.3])= 0.3/1.0= 0.3
and therefore overlaps with applicant's claimed limitation." Final Act. 4;
Ans. 3. Moreover, as indicated below, Kazuhiko also broadly teaches that
the metallic element to Si atomic ratio can range from 20:80 to 70:30.
Kazuhiko iJ 25.
5 This argument is not relevant to claim 11 because it does not require any
particular Ti/Si ratio in a quaternary system. See claim 11.
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Application 13/428,395
is also applicable to a quaternary system having Si-Ti-Ni-C. KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (An obviousness analysis requires
reading the prior art in context, taking into account "the background
knowledge possessed by a person having ordinary skill in the art," and "the
inferences and creative steps that a person of ordinary skill in the art would
employ."); see also In re Preda, 401F.2d 825, 826 (CCPA 1968) ("[I]t is
proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom." )
In any event, the Examiner has found, and Appellants acknowledge,
that Kazuhiko teaches adding one or more metallic elements selected from,
inter alia, nickel (Ni) and titanium (Ti) to a raw material containing Si as
indicated supra, with the amount of the metallic metal being added in a
metallic element to Si atomic ratio of 20:80-70:30, which is broader than the
specific Ti:Si ratio discussed above. Ans. 10; App. Br. 3; In re Peterson,
315 F.3d 1325, 1329-30 (Fed. Cir. 2003) ("In cases involving overlapping
ranges, we and our predecessor court have consistently held that even a
slight overlap in range establishes a primafacie case of obviousness.") The
Examiner has also found, and Appellants also acknowledge, that Kazuhiko
teaches that "[a ]lthough the addition amount of a metallic element is usually
added in metallic element: Si= 20:80-70:30 (atomic ratio) to Si in melt, the
optimum amount changes with kinds of metallic element[ s] [employed]."
Compare Ans. 10 with App. Br. 3; Kazuhiko iJ 25. Thus, there is an ample
factual basis for the Examiner's finding that optimizing such atomic Ti:Si
atomic ratio to arrive at the atomic ratio relation recited in claim 1 is well
within the ambit of one ordinary skill in the art. In re Boesch, 617 F.2d 272,
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Application 13/428,395
276 (CCPA 1980)("[D]iscovery of an optimum value of a result effective
variable .. .is ordinarily within the skill of the art."); In re Aller, 220 F.2d
454, 456 (CCPA l 955)("[W]here the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.")
Appellants also contend that:
It is noted that Kazuhiko et al. describes that the solubility of C
is raised by adding metals to Si-C compound. The present invention
adds Ti to raise the solubility of C, but additionally adds Ni which
etches back the growing surface of SiC. A polytype such as 6H-SiC
may occur on the surface of 4H-SiC as it is grown, resulting in a
decline in its crystal quality. 6H-SiC has a higher activating energy as
compared with 4H, and therefore this polytype of 6H-SiC is removed
from the seed surface early in its occurrence by the addition of Ni to
the melt in the present invention, so that 4H-SiC can be grown stably.
("According to the present invention, Ti and Ni are added to the melt
to increase solubility of C to the melt at a low temperature range of
2000°C or lower, thereby maintaining high C concentration in the
melt as well as suppressing mixing of the polytype of 6H-SiC.
Accordingly, 4H-SiC single crystals can be stably produced with an
effective crystal growth rate for a prolonged time" - paragraph
0017.)
App. Br. 5.
However, the fact that Kazuhiko does not recognize Appellants' alleged additional
reason for adding Ti and Ni to Si-C compound does not indicate that there is no
reason to arrive at the claimed invention. Alcon Research, Ltd. v Apotex Inc., 687
F.3d 1362, 1368 (Fed. Cir. 2012) ("[M]otivation to modify a prior art reference to
arrive at the claimed invention need not be the same motivation that the patentee
had.")( citing KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406, 420 (2007) (stating
that it is error to look "only to the problem the patentee was trying to solve")); In
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Application 13/428,395
re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992)("As long as some [reason,]
motivation or suggestion to combine the references is provided by the prior art
taken as a whole, the law does not require that the reference be combined for the
reasons contemplated by the inventor.") Here, as acknowledged by Appellants,
Kazuhiko teaches that "the solubility of C is raised by adding metals [such as Ti
and Ni] to Si-C compound[,]" thus providing an apparent reason or suggestion to
include Ti and/or Ni in its Si-C melt as discussed above. Moreover, neither claim
1 nor claim 11 limits the single crystal produced to 4H-SiC single crystals. In re
Self, 671F.2d1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail from the
outset because ... they are not based on limitations appearing in the claims.")
In any event, Kazuhiko, at paragraph 27, teaches that:
The crystal structure of a SiC single crystal substrate [(i.e., a
seed crystal)] can choose the same thing as the crystal structure of the
SiC single crystal which it is going to manufacture. For example,
when using the substrate of 6H-SiC-single-crystal structure, the 6H-
SiC single crystal which is the same crystal structure grows epitaxially
on a substrate.
In other words, the types of seed crystals used will determine the types of single
crystal structures grown, including 4H-SiC single crystal. Id. Thus, even if we
were to interpret claims 1 and 11 as being limited to forming 4H-SiC single
crystals, we concur with the Examiner that one of ordinary skill in the art would
have been led to add metals, such as Ti and Ni, to a Si-C compound in the process
of manufacturing a single crystal silicon carbide, such as 4H-SiC single crystal, via
using an appropriate seed crystal, i.e., a 4H-SiC single crystal substrate.
II. Claims 3 and 5-9
Appellants contend that Kazuhiko would not have suggested using the
atomic ratio of a total of Ti and Ni relative to Si as recited in claims 3 and 5
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Application 13/428,395
and an atomic ratio of Ni relative of Ti as recited in claims 6-9. App. Br. 5-
6. However, as indicated supra, Kazuhiko teaches using a metal to Si
atomic ratio of 20:80-70:30 which are inclusive of the relations recited in
claims 3 and 5-9. Peterson, 315 F.3d 1325, 1329-30. More importantly,
Kazuhiko teaches that "[a ]lthough the addition amount of a metallic element
is usually added in metallic element: Si= 20:80-70:30 (atomic ratio) to Si in
melt, the optimum amount changes with kinds of metallic element[ s]
[employed]." Compare Ans. 10 with App. Br. 3; Kazuhiko ,-i 25. Implicit in
this teaching in Kazuhiko is that the optimum or workable amounts of
metals should be used in relation to Si, with the recognition that each or total
metallic element employed being affected by their total relation to Si. In
other words, the determination of the optimum or workable atomic ratios of
a total of Ti and Ni relative to Si or the optimum or workable atomic ratio of
Ti relative to Ni in their total relation to Si to arrive at the atomic ratio
relations recited claims 3 and 5-9 is well within the ambit of one ordinary
skill in the art. Boesch, 617 F.2d at 276; Aller, 220 F.2d at 456.
Accordingly, we find no reversible error in the Examiner's determination
that Kazuhiko would have rendered the subject matter recited in claims 1 and 3-17
obvious to one of ordinary skill in the art within the meaning of 35 U.S.C.
§ 103(a).
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Application 13/428,395
ORDER
In view of the foregoing, the decision of the Examiner to reject claims 1 and
3-17 under 35 U.S.C. § 103(a) is AFFIRMED.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv).
AFFIRMED
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