Ex Parte Takahashi et al

Patent Trial and Appeal Board

Sep 18, 2012

10525443 (P.T.A.B. Sep. 18, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/525,443 02/24/2005 Tadashi Takahashi 5576-177 3864
20792 7590 09/18/2012
MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
BURKHART, ELIZABETH A
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
09/18/2012 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 TADASHI TAKAHASHI, NAOYUKI TAKAHASHI, and
TAKATO NAKAMURA
__________

Appeal 2011-002903
Application 10/525,443
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002903
Application 10/525,443

2
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1, 8, 10, 11, 13, and 15. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We REVERSE.
Appellants’ invention is directed to a method of preparing a metal
sulfide film at atmospheric pressure to provide a low cost, convenient
process of producing metal sulfide films (Spec. 1:7-8; 3:16-23). Appellants
explain that prior art methods of forming metal sulfide films deposit the
films in a vacuum, which requires a complicated apparatus and adds to the
cost of the process (id. at 1-3).
Claim 1 is illustrative:
1. A method for preparing a metal sulfide film,
comprising the steps of providing metal halide as a first raw
material and a thioamide compound as a second raw material,
vaporizing the metal halide and the thioamide compound, and
reacting the metal halide with the thioamide compound at
atmospheric pressure in a film forming section heated to from
375 to 425°C to form the metal sulfide film on a substrate.
Appellants appeal the following rejection:
Claims 1, 8, 10, 11, 13, and 15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Takahashi (Naoyuki Takahashi et al., Preparation
of Pyrite Thin Films by Atmospheric Pressure Chemical Vapor Deposition
Using FeCl3 and CH3CSNH2, 10 J. MATERIALS CHEMISTRY 2346 (2000)) in
view of Sasaki (Y. Sasaki et al., Iron Pyrite Thin Film Prepared by Double
Source Vacuum Vapor Deposition, 18 J. MATERIALS SCI. 1193 (1999)).

Appeal 2011-002903
Application 10/525,443

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ISSUE
Did the Examiner reversibly err in concluding that it would have been
obvious to modify Takahashi’s atmospheric pressure deposition process to
use Sasaki’s temperature range and Fe/S ratio disclosed with a vacuum
deposition process? We decide this issue in the affirmative.

FINDINGS OF FACT AND ANALYSES
The Examiner finds that Takahashi teaches an atmospheric deposition
process to form iron pyrite on a substrate, but fails to specifically teach the
claimed temperature range of 375 to 425°C for the film forming section
(Ans. 3). The Examiner finds that Takahashi teaches a growth temperature
range for the film from 723-823 K (450-550°C). Id. The Examiner finds
that Sasaki teaches that high partial pressure of sulfur and high temperature
can be critical factors to preparing pure pyrite and that once these conditions
were known, pure pyrite can be prepared by other methods (id. at 4). The
Examiner finds that Sasaki teaches that a pure pyrite film may be formed at
temperatures higher than 300°C and a Fe/S flux ratio greater than 6.8 (id.).
The Examiner concludes that it would have been obvious to adjust the Fe/S
flux ratio in Takahashi’s process as suggested by Sasaki in order to form a
pure pyrite film at lower temperatures, such as within the claimed range,
because Takahashi is concerned with forming single phase pyrite and
Sasaki’s teachings regarding growth temperature and partial pressure may be
extrapolated to other known methods of depositing pyrite as taught by
Sasaki (id.).
Appellants argue that there is no disclosure or suggestion in Sasaki
that the Fe/S flux or temperature range which may be appropriate for
Appeal 2011-002903
Application 10/525,443

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preparing a pure pyrite film by double source vacuum vapor deposition or
other in vacuo methods, are broadly applicable to any and all methods of
vapor deposition to prepare a pure pyrite film (App. Br. 6). Appellants
contend that the Examiner’s rejection does not provide the requisite reason,
suggestion or incentive to combine the cited prior art, with a predictable and
reasonable expectation of success, to arrive at the recitations of the pending
claims (Reply Br. 3).
The preponderance of the evidence favors Appellants’ arguments of
nonobviousness. The Examiner’s rejection is premised on Sasaki’s
following teaching:
High partial pressure of sulfur and high temperature can
be a critical factor to prepare the pure pyrite. In other words,
once these conditions were satisfied, pure pyrite phase can be
prepared by other methods.
(Sasaki 1193).
The Examiner finds that “other methods” would have included
atmospheric pressure chemical vapor deposition (CVD) processes such as
that taught by Takahashi, such that there is reasonable expectation of
successfully modifying Takahashi’s atmospheric pressure process to use
Sasaki’s Fe/S flux ratio and temperature range to arrive at the claimed
invention (Ans. 5). However, the Examiner has not satisfied the burden of
establishing that Sasaki’s disclosure of a suitable “high temperature” and
Fe/S flux ratio for vacuum deposition processes would have been reasonably
applicable to other non-vacuum methods. Sasaki describes on page 1193
that various deposition processes are known but does not indicate that any of
the deposition processes are performed at atmospheric pressure. Indeed,
Sasaki uses a “double-source evaporation method” which applies the film in
Appeal 2011-002903
Application 10/525,443

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a vacuum (Sasaki 1193). Accordingly, we understand Sasaki’s “other
methods” disclosure to refer to other vacuum processes.
Therefore, it is unclear to us and the Examiner has not adequately
explained why teachings regarding suitable temperatures or flux ratios for
vacuum processes would have been reasonably expected to be successfully
used without modification in non-vacuum (i.e., atmospheric) processes to
produce iron pyrite films. The Examiner finds that there is a reasonable
expectation of success because Sasaki does not teach that pressure (other
than partial pressure of sulfur) is a critical factor (Ans. 5). However, as
Appellants argue, it would appear that pressure affects temperature (Reply
Br. 4). Indeed, Takahashi’s atmospheric pressure process discloses that the
temperature for film forming is between 723-773 K (450-500°C), which is
outside Appellants’ claimed range and higher than the temperature used in
Sasaki’s vacuum process.
On this record, the Examiner has not established that it would have
been obvious to modify Takahashi’s atmospheric pressure process to use
Sasaki’s parameters (e.g., film-forming temperatures) for a vacuum
deposition process. We reverse the Examiner’s § 103 rejection.

DECISION
The Examiner’s decision is reversed.

ORDER
REVERSED

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