Ex Parte Takeuchi et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201813537294 (P.T.A.B. Feb. 27, 2018) Copy Citation 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. 13/537,294 06/29/2012 Toshihiko TAKEUCHI 740756-3761 1105 22204 7590 03/01/2018 NIXON PEABODY, LLP 799 Ninth Street, NW SUITE 500 WASHINGTON, DC 20001 EXAMINER MCCLURE, CHRISTINA D ART UNIT PAPER NUMBER 1718 NOTIFICATION DATE DELIVERY MODE 03/01/2018 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 following e-mail address(es): nppatent @ nixonpeabody. com ipairlink @ nixonpeabody. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOSHIHIKO TAKEUCHI, KAZUTAKA KURIKI, and MAKOTO ISHIKAWA Appeal 2016-006247 Application 13/537,294 Technology Center 1700 Before JAMES C. HOUSEL, JEFFREY R. SNAY, and DEBRA L. DENNETT, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL1 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—20. We have jurisdiction. 35 U.S.C. § 6(b). An oral hearing was held on February 15, 2018, a transcript of which will be entered into the record in due course. We reverse. 1 We cite to the Specification (“Spec.”) filed June 29, 2012; Final Office Action (“Final Act.”) dated March 18, 2015; Appellants’ Appeal Brief (“App. Br.”) dated October 19, 2015; Examiner’s Answer (“Ans.”) dated April 6, 2016; and Appellants’ Reply Brief (“Reply Br.”) dated June 3, 2016. 2 Appellants identify Semiconductor Energy Laboratory Co., Ltd. as the real party in interest. App. Br. 2. Appeal 2016-006247 Application 13/537,294 BACKGROUND The invention relates to a method for forming a silicon film suitable for use as an active material on a current collector in a power storage device. Spec. 1,4. Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A method for forming a silicon film, comprising: forming a first silicon film over a conductive layer by a low-pressure chemical vapor deposition method by supplying a source gas which contains a deposition gas containing silicon into a reaction space at a temperature range which is suitable for forming the first silicon film by the low-pressure chemical vapor deposition method; stopping the supply of the source gas and exhausting the source gas from the reaction space, wherein the reaction space is kept at the temperature range; and forming a second silicon film over the first silicon film so that the second silicon film has whisker-like portions by a low- pressure chemical vapor deposition method by supplying the source gas whose flow rate is higher than that of the source gas used in forming the first silicon film into the reaction space at the temperature range, wherein the conductive layer is not placed out of the reaction space in any period of the above processes. REJECTIONS I. Claims 1, 2, 4—7, 15, 16, and 18—20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Arai,3 Habib,4 and Kamins.5 3 US 5,254,369, issued Oct. 19, 1993 (“Arai”). 4 US 2010/0193768 Al, published August 5, 2010 (“Habib”). 5 Kamins, T.I. et al., “Chemical vapor deposition of Si nano wires nucleated by TiSi 2 islands on Si,” Applied Physics Letters, Vol. 76, No. 5, 562—564 (2000) (“Kamins”). 2 Appeal 2016-006247 Application 13/537,294 II. Claims 8, 9, and 11—14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Arai, Habib, Kamins, Archer,6 and Brown.7 III. Claims 1,3, 15, and 17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Liu,8 Arai, and Finucane.9 IV. Claims 8 and 10 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Liu, Arai, Habib, Archer, Brown, and Finucane. DISCUSSION Each of Rejections I—IV is premised on the Examiner’s finding that Arai’s disclosure of forming a diffusion or overlayer on a metallic substrate “suggests that the surface of the substrate can be tailored such that it can have a layer of silicon on the surface or a diffusion layer in which silicon and the metallic species will be present on the surface,” Final Act. 17, and the Examiner’s further finding that such surface-located metallic species then would serve as catalyst islands for growth of silicon nanowires, id. at 19, 34. Appellants argue, inter alia, that the foregoing findings are conclusory assertions without support of evidence. See, e.g., Reply Br. 3 (“The Answer has not provided anything but an assertion that Arai discloses 6 Archer, M.D. et al., “Nanostructured and Photoelectrochemical Systems for Solar Photon Conversion,” World Scientific, section 2.5, 120—130 (2008) (“Archer”). 7 Brown, E.W., “An Introduction to Solar Energy,” accessed September 8, 2014 at http://www.ccs.neu.edu/home/feneric/solar.html (“Brown”). 8 Liu, Z.Q. et al., “Growth of amorphous silicon nanowires,” Chemical Physics Letters 341, 523—528 (2001) (“Liu”). 9 Finucane, E.W., “Definitions, Conversions, and Calculations for Occupational Safety and Health Professionals,” Taylor and Francis, Chapter 1, pp. 1—1 to 1—61 (2006) (“Finucane”). 3 Appeal 2016-006247 Application 13/537,294 forming a first silicon film so that the resulting structure will be similar to catalyst structure of Kamins having titanium islands separated by a silicon film.”). We find Appellants’ argument persuasive. With regard to Rejections I and II, the Examiner finds that Kamins teaches forming silicon nanowires by chemical vapor deposition onto silicon substrates having Ti-containing islands. Final Act. 19. Similarly, with regard to Rejections III and IV, the Examiner finds that Liu teaches forming silicon nanowires by chemical vapor deposition onto Au-Pd islands. Id. at 32. In each instance, the Examiner relies on Arai as a teaching that metallic islands suitable for nanowire growth may be formed on a surface by chemical vapor deposition of a diffusion layer of silicon on a metallic substrate. Final Act. 17, 34. The Examiner cites no evidence in Arai or elsewhere that the silicon diffusion layer in Arai would have resulted in metallic surface species, much less surface islands suitable for catalysis of subsequent nanowire growth. Arai is directed to formation of protective silicon coatings on iron or iron-based alloys, although other metallic substrates also are contemplated. Arai 1:12—15, 2:40-42. Under appropriate deposition conditions, a diffusion layer is obtained in the form of a solid solution of silicon and the coated metal substrate, the diffusion layer having a “controllable Silicon content, diffusion thickness and concentration gradient.” Id. 2:35—38. The disclosed coatings impart resistance to corrosion and moisture absorption. Id. at 5:15— 18. We are not directed to, nor do we find, any disclosure in Arai relating to substrate metal species being present at the surface of such a diffusion coating. To the contrary, as Appellants point out, “Arai is directed toward protecting a metal layer.” App. Br. 12. The Examiner does not identify 4 Appeal 2016-006247 Application 13/537,294 evidence sufficient to support a finding that Arai’s protective diffusion coating would include surface metal species sufficient to serve as catalyst for nanowire growth. To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art or the inferences and creative steps a person of ordinary skill in the art would have employed. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988); KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007). Here, each of the Examiner’s obviousness determinations is premised on a finding that Arai teaches forming a silicon coating having surface-located metal islands. On the record before us, the Examiner does not identify evidence sufficient to support that key finding. For that reason, Rejections I—IV are not sustained. DECISION The Examiner’s decision rejecting claims 1—20 is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation