Ex Parte Sakurada et al

Patent Trial and Appeal Board

Mar 8, 2018

13953421 (P.T.A.B. Mar. 8, 2018)

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.
13/953,421 07/29/2013 Takashi SAKURADA 201917-0081-01-US-501058 5863
55694 7590 03/12/2018
DRINKER BIDDLE & REATH (DC)
1500 K STREET, N.W.
SUITE 1100
WASHINGTON, DC 20005-1209
EXAMINER
PLESZCZYNS KA, JOANNA
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
03/12/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKASHI SAKURADA and TOMOHIRO KAWASE
Appeal 2017-004671
Application 13/953,421
Technology Center 1700
Before LINDA M. GAUDETTE, RAE LYNN P. GUEST, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 7—12, 14, and 15 in the above-identified
application.2 We have authority pursuant to 35 U.S.C. § 6(b). We affirm.
1 Appellant is the Applicant, Sumitomo Electric Industries, Ltd., which
according to the Appeal Brief is the real party in interest. Appeal Brief 1,
May 12, 2016 [hereinafter Appeal Br.].
2 Final Office Action, Dec. 31, 2015 [hereinafter Final Action]; Examiner’
Answer, Nov. 3, 2016 [hereinafter Answer], Appellant’s arguments are
found in the Appeal Brief. Appellant did not submit a Reply Brief.
Appeal 2017-004671
Application 13/953,421
BACKGROUND
Appellant’s invention “relates to a crystal and a substrate of
electrically conductive GaAs, and more particularly to reduction in size and
density of precipitates contained in the crystal and substrate of conductive
GaAs.” Spec. I.3
Representative claim 7 is the sole independent claim:
7. A conductive GaAs bulk crystal having an atomic
concentration of Si more than lxlO17 cm-3, wherein a density of
precipitates having sizes of at least 30 nm contained in the
crystal is at most 400 cm~2.
Appeal Br. A-l (emphasis of key limitation added).
The Examiner maintains the following grounds of rejection:
1. Claims 7—9, 14, and 15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Inoue4 in view of Suezawa5 and Dutta.6 See id. at
2-A.
2. Claims 7—10, 14, and 15 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Matsumoto7 in view of Suezawa and Dutta. See
id. at 5—7.
3. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Matsumoto in view of Suezawa, Dutta, and
Iwasaki.8 See id. at 7—8.
3 Specification, July 29, 2013 [hereinafter Spec.].
4 Inoue et al., US 5,612,014 (issued Mar. 18, 1997).
5 M. Suezawa et al., Optical Studies of Heat-Treated Si-Doped GaAs Bulk
Crystals, 89 J. Appl. Phys. 1618 (1991).
6 Dutta, US 2007/0034250 Al (published Feb. 15, 2007).
7 Matsumoto, US 2007/0079751 Al (published Apr. 12, 2007).
8 Iwasaki, US 5,599,389 (issued Feb. 4, 1997).
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Application 13/953,421
In the Appeal Brief, Appellant argues claim 7 separately with respect
to the first two rejections, and these arguments regarding each rejection are
substantially the same. Compare Appeal Br. 5—13, with id. at 14—22.
Appellant presents no substantially different argument with respect to
dependent claims 8—12, 14, and 15. See id. at 13, 22—24. Therefore,
consistent with 37 C.F.R. § 41.37(c)(l)(iv), we limit our discussion to
independent claim 7. Claims 8—12, 14, and 15 fall with claim 7.
DISCUSSION
The Examiner finds that Inoue and Matsumoto, separately, teach Si-
doped GaAs crystals having an atomic concentration of Si more than 1 x 1017
cm-3 as recited in claim 7. Final Action 2, 5 (citing Inoue 2:1—4, 4:40—51;
Matsumoto 150). Neither Inoue nor Matsumoto, however, discloses that “a
density of precipitates having sizes of at least 30 nm contained in the crystal
is at most 400 cm-2” as recited in claim 7. Id.
Nevertheless, the Examiner finds that Suezawa teaches that the
particle size, spatial distribution, and density of Si precipitates affect the
electrical and optical characteristics of a GaAs material. See id. at 2—3, 5
(citing Suezawa 1618, 1620-23). The Examiner also finds that Dutter
teaches making bulk semiconductor crystals, such as GaAs, “substantially
free of crystal defects” by reducing the number of defects, including
precipitates, to fewer than 1000 or 100 defects per cm2. Id. at 3—4, 6.
Therefore, the Examiner determines that a person of ordinary skill in
the art at the time of invention would have been motivated to optimize the
density and size of Si precipitates in the GaAs bulk crystal of Inoue or
Matsumoto to achieve the material recited in claim 7 and, in particular, to
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Application 13/953,421
optimize in the direction of making the crystals “substantially free of
defects.” Id.', see also Answer 9-11.
Appellant argues that the Examiner has not established a prima facie
case of unpatentability because “the Examiner does not explain anywhere
the standard(s) by which one skilled in the art would have considered any
particular density and size combination to be more optimal than another.”
Appeal Br. 7, 16.
This argument is not persuasive of reversible error in the Examiner’s
rejection. “[Wjhere 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.” In re Applied Materials, Inc., 692 F.3d 1289,
1295 (Fed. Cir. 2012) (quoting In reAller, 220 F.2d 454, 456 (Fed. Cir.
1955)). This rule applies when the optimized variable is a “result-effective
variable.” Id. “[T]he prior art need not provide the exact method of
optimization for the variable to be result-effective. A recognition in the prior
art that a property is affected by the variable is sufficient to find the variable
result-effective.” Id. at 1297.
The Examiner has shown that a person of ordinary skill in the art
would have understood that the size and the density of Si precipitates affects
the electrical and optical properties of a GaAs bulk crystal, and that the size
and density are therefore result-effective variables. See Answer 9—11.
Moreover, the Examiner has identified additional guidance in Dutta that
would have given a skilled artisan a reason to reduce precipitates of all kinds
(including precipitates larger than 30 nm) to a density as low as 100 cm-2, so
that the material is “substantially free of defects.” The Examiner has thus
established a prima facie case of unpatentability. Cf. In re Swentzel, 219
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Application 13/953,421
F.2d 216, 219 (1955) (where the prior art suggested that smaller particles
have an advantage over larger ones, finding the desired particle size
“involves nothing more than routine experimentation and exercise of the
judgment of one skilled in the art.”).
Appellant also argues that the teachings in Suezawa constitute “vague
prior art,” of the type criticized in Bayer Schering Pharma AG v. Barr Labs.,
Inc., 575 F.3d 1341 (Fed. Cir. 2009).” Appeal Br. 9, 18. This argument is
not persuasive of reversible error. In Bayer, the court stated that “an
invention is not obvious to try where vague prior art does not guide an
inventor toward a particular solution.” Bayer, 575 F.3d at 1347. This is
inapplicable to the Examiner’s rejections, which show that the prior art
would have guided a skilled artisan to optimize the size and density of Si
precipitates in a GaAs bulk crystal, as discussed above. Moreover, the
Examiner has persuasively shown that Suezawa teaches that particle size and
density affect specific electrical and/or optical properties of crystals, and that
these teachings are not vague. See Answer 12, 18.
Appellant next argues that Suezawa teaches away from the proposed
combination with Inoue or Matsumoto because Suezawa discloses annealing
after cooling to room temperature. See Appeal Br. 10-11, 19-20 (citing
Suezawa 1618). By contrast, according to Appellant, the Specification
“makes clear that it is critical to anneal the grown crystal before cooling to
room temperature.” Id. at 11, 20 (citing Spec. 6). We find this argument
unpersuasive. First, the Examiner does not cite Suezawa for its method of
forming a GaAs bulk crystal, but for its teachings about how particle size
and density affect electrical and optical properties of a GaAs bulk crystal.
See Answer 13, 19. Second, while Suezawa teaches a particular annealing
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Application 13/953,421
method, Appellant has not directed our attention to anything in Suezawa or
elsewhere to “criticize, discredit, or otherwise discourage” the composition
of matter recited in claim 7. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004). Claim 7 does not require that the composition be made by any
particular annealing method.
Appellant also argues that “the annealing process relied upon in
Suezawa, even if followed, would not result in a density of precipitates
having sizes of at least 30 nm contained in the crystal being at most
400 cm-2.” Appeal Br. 12,21. This argument is not persuasive of reversible
error, because the Examiner’s rejection, as discussed above, does not rely on
any specific process recited in Suezawa, but rather on what Suezawa teaches
a person of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425
(CCPA 1981) (“The test for obviousness ... is what the combined teachings
of the references would have suggested to those of ordinary skill in the art.”)
For the above reasons, Appellant has not shown reversible error in the
Examiner’s rejections of claims 7—12, 14, and 15.
DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended. See 37 C.F.R. § 1.136(a)(l)(iv) (2016).
AFFIRMED
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