Ex Parte Saito et al

Patent Trial and Appeal Board

Dec 14, 2016

12474134 (P.T.A.B. Dec. 14, 2016)

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.
12/474,134 05/28/2009 Makoto Saito 30794.263-US-U1 1926
22462 7590 12/15/2016
GATES & COOPER LLP (General)
HOWARD HUGHES CENTER
6701 CENTER DRIVE WEST, SUITE 1050
LOS ANGELES, CA 90045
EXAMINER
BRATLAND JR, KENNETH A
ART UNIT PAPER NUMBER
1714
MAIL DATE DELIVERY MODE
12/15/2016 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 MAKOTO SAITO,
STEVEN P. DENBAARS, JAMES S. SPECK,
and SHUJI NAKAMURA
____________

Appeal 2016-000029
Application 12/474,134
Technology Center 1700
____________
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 12 and 14–29 under 35 U.S.C. § 103(a)
as obvious. Final Act. (December 2, 2014). Appellants1 seek reversal of
these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction. 35
U.S.C. § 6(b). For the reasons set forth below, we AFFIRM.

1 The Regents of the University of California are identified as the real party
in interest. Appeal Br. 1.
Appeal 2016-000029
Application 12/474,134
2
BACKGROUND
The ’134 Application describes a solvo-thermal method for
simultaneously growing high quality and high growth rate bulk hexagonal
würtzite single crystals. Spec. 5:29–31. According to the ’134 Application,
crystal quality and growth improvements are dependent on proper selection
of crystal growth planes on nonpolar or semipolar seed surfaces. Id. at 6:1–
27.
Claim 12 is representative of the ’134 Application’s claims and is
reproduced below:
12. A method of growing a III-nitride single bulk crystal with a
hexagonal w[ü]rtzite structure, comprising:
performing solvo-thermal crystal growth on a III-nitride
seed crystal having a growth surface comprising a
nonpolar plane having an off-orientation angle that is
larger than 0.5 degrees and is also 48 degrees or less or a
semipolar plane to create the III-nitride single bulk
crystal, wherein growth on the growth surface of the III-
nitride seed crystal comprising the nonpolar plane having
the off-orientation angle that is larger than 0.5 degrees
and is also 48 degrees or less or the semipolar plane
results in a smoother surface as compared to growth on a
III-nitride seed crystal having a growth surface
comprising a polar plane.
Appeal Br. 17 (Claims App.).
Appeal 2016-000029
Application 12/474,134
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REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 12, 14–18, and 20–29 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Callahan,2 Dwilinski,3 and
Grudowski.4 Final Act. 2.
2. Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Callahan, Dwilinski, Grudowski, and Xu.5
Final Act. 24.
DISCUSSION
Appellants argue for the reversal of the rejections to claims 14–29 on
the basis of limitations present in claim 12. See Appeal Br. 7–15; Reply Br.
1–8. We, therefore, limit our analysis to the rejection of claim 12. Claims
14–29 will stand or fall with claim 12. 37 C.F.R. § 41.37(c)(1)(iv).
Rejection 1. We affirm this rejection based upon the findings of fact
and reasoning set forth on pages 2–24 of the Final Action and pages 2–5 of
the Examiner’s Answer. We adopt these factual determinations and
reasoning as our own. We add the following for emphasis.

2 Michael J. Callahan et al., Growth of GaN crystals under ammonothermal
conditions, 798 MAT. RES. SOC. SYMP. PROC., Y2.10.1–Y2.10.6 (2004).
3 WO 2006/057463 A1, published June 1, 2006. We shall follow the
Examiner and Appellants by referring to the national stage entry US
7,905,957 B2, issued Mar. 15, 2011.
4 P.A. Grudowski et al., The effect of substrate misorientation on the
photoluminescence properties of GaN grown on sapphire by metalorganic
chemical vapor deposition, Vol. 69 (24) APPL. PHYS. LETT. 3626–28
(December 9, 1996).
5 US 2006/0029832 A1, published Feb. 9, 2006.
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Application 12/474,134
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Appellants argue, inter alia, that the rejection should be reversed for
any of three reasons. We are not persuaded by any of these arguments. We
address these arguments in turn.
First, Appellants argue that Callahan, Dwilinski, and Grudowski
cannot be combined because the “growth methods, starting materials and
growth surfaces [of the applied prior art] are all so different.” Reply Br. 4.
In particular, Appellants argue that “one of skill in the art would not look to
combine [Callahan’s and Dwilinski’s] ammonothermal growth on III-nitride
seed crystals . . . with [Grudowski’s] MOCVD growth on sapphire substrates
. . . because the techniques and materials are so different.” Appeal Br. 12;
see generally Reply Br. 2–4 and 6.
We are not persuaded by this argument. Appellants do not point to
any evidence that the ordinary skilled artisan would not have been capable
of modifying the subsidiary Grudowski reference in the manner proposed by
the Examiner. Without such evidence, this assertion is not persuasive. See
Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997)
(“[A]rguments of counsel cannot take the place of evidence lacking in the
record.”).
In an obviousness determination, a combination of references must be
considered for what the combination of disclosures taken as a whole would
suggest to one of ordinary skill in the art. See, e.g., In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971).
Here, the Examiner found that ammonothermal growth is a cost-
effective method for producing GaN bulk crystals. Ans. 4 (citing Callahan
Y2.10.2, 1st full ¶); see also Dwilinski col. 1:26–35. The Examiner further
found that Dwilinski teaches that ammonothermal growth of GaN yields
quality parameters higher than that obtained by MOCVD. Ans. 4; see also
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Application 12/474,134
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Dwilinski 1:26–35. In view of these descriptions, we neither discern nor
have Appellants persuaded us that the Examiner erred in concluding that use
of an ammonothermal method for producing higher quality GaN bulk
crystals at lower costs would have been obvious to a person of ordinary skill
in the art considering the combined descriptions of Callahan, Dwilinski, and
Grudowski. Appellants, furthermore, do not provide any technical reason
why the process or materials described in Grudowski could not be modified
in the manner suggested by the Examiner.
Second, Appellants argue that the Examiner erred in combining
Grudowski with Callahan and Dwilinski because Grudowski’s
photoluminescence intensity increase does not indicate surface smoothness.
Appeal Br. 11; Reply Br. 4–5. Rather, Appellants assert that Grudowski’s
higher photoluminescence intensity indicates decreased incorporation of
unwanted impurities and/or reduced density of nitrogen vacancies. Appeal
Br. 11 (citing Grudowski p. 3627, 1st full ¶; p. 3628, 1st full ¶).
“It is well settled that a prior art reference is relevant for all that it
teaches to those of ordinary skill in the art.” In re Fritch, 972 F.2d 1260,
1264 (Fed. Cir. 1992). As the Examiner found, Grudowski teaches that
photoluminescence “is utilized as a ‘characterization tool to evaluate
material properties, including the crystal quality, [and] interface
quality. . . .’” Ans. 2–3 (citing Grudowski p.3626, 2nd full ¶). Appellants’
arguments fail to persuasively demonstrate error in the Examiner’s position
that Grudowski’s “‘interface quality’” reasonably encompasses surface
roughness because the crystal surface is an interface between a solid and the
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Application 12/474,134
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atmosphere.6 See Ans. 3. The Examiner, furthermore, does not rely on
Grudowski alone for teaching crystal growth methods that provide
improvements in crystal surface smoothness. The Examiner found that
Dwilinski identifies a reduced surface roughness as a result of
ammonothermal growth on nonpolar surfaces. Ans. 4. Appellants do not
dispute this finding. See Reply Br. 7. We do not discern reversible error in
these findings.
Thus, we are not persuaded by this argument.
Third, Appellants argue that the Examiner erred in combining
Dwilinski with Callahan and Grudowski because Dwilinski does not identify
a reduced surface roughness for crystals grown on non-polar planes having
an off-orientation angle or semipolar planes. Reply Br. 6–7; see also Appeal
Br. 10. Appellants further argue that Dwilinski does not teach that crystals
grown on non-polar planes having an off-orientation angle or semipolar
planes “result[] in a smoother surface as compared to growth on a III-nitride
seed crystal having a growth surface comprising a polar c-plane.” Appeal
Br. 10.
“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
The Examiner does not rely on Dwilinski alone for teaching crystal growth
on planes having an off-orientation angle. The Examiner found Grudowski
teaches that improvements in interface quality result from misorienting

6 Likewise, Appellants’ Specification similarly equates quality and
roughness. Spec. 6:8 (“[c]rystal quality also depends on seed surface
roughness.”).
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Application 12/474,134
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crystal growth at the surface by 2–9 o, which falls within the range recited in
claim 12. Final Act. 5 (citing Grudowski pp. 3626–27, 6th full ¶).
Furthermore, as set forth above, Appellants do not dispute that
Dwilinski identifies a reduced surface roughness as a result of
ammonothermal growth on nonpolar surfaces. Reply Br. 7.
The Examiner relied upon these findings to find that a person of
ordinary skill in the art at the time of the invention would have attempted
crystal growth on a nonpolar m-plane surface misoriented in the c-plane
direction with a reasonable expectation of success. Final Act. 5–6.
Appellants have not identified reversible error in the Examiner’s
determination that misorienting crystal growth at the nonpolar surface by 2–
9 o involves the use of a known method to accomplish a predictable result.
Such improvements would likely have been obvious. See KSR, 550 U.S. at
416 (“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”)
This is especially true when, as here, the prior art describes a reason for
making the modification. See Final Act. 5; Ans. 4; see also Reply Br. 7.
We, therefore, are not persuaded by this argument.
In view of the foregoing, we affirm the rejection of claims 12, 14–18,
and 20–29.
Rejection 2. Claim 19 was rejected as obvious over the combination
of Callahan, Dwilinski, Grudowski, and Xu. Final Act. 24. Appellants rely
on the same arguments for reversal of this rejection that we previously found
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Application 12/474,134
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unpersuasive in connection with Rejection 1. Therefore, we also affirm the
rejection of claim 19.
CONCLUSION
For the reasons provided in the Examiner’s Final Office Action and
Answer, and above, we affirm the rejections of claims 12 and 14–29 of the
’134 Application.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED