Ex parte Young et al.

Board of Patent Appeals and Interferences

Jun 21, 1999

08077709 (B.P.A.I. Jun. 21, 1999)

Application for patent filed June 15, 1993. According to1
applicants, the application is a continuation of Application
07/714,139, filed June 11, 1991, abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KWO-HSIUNG YOUNG
and JONATHAN Z. SUN
_____________
Appeal No. 95-0537
Application 08/077,7091
______________
ON BRIEF
_______________
Before SOFOCLEOUS, HANLON, and PAK, Administrative Patent
Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final
Appeal No. 95-0537
Application No. 08/077,709
2
rejection of claims 1-9, all of the claims pending in the
application. Claims 1 and 6 are illustrative of the subject
matter on appeal and read as follows:
Claim 1. A superconductive device comprising:
a high temperature superconductive film of at least one
micron square having at least 80% by volume a-axis oriented
and c-axis aligned in one preferential direction on
a substrate having an anisotropic surface cell.
Claim 6. A superconductive device comprising:
a high temperature superconductive film of at least one
micron square including a-axis oriented domains, where the a-
axis domains have a c-axis alignment in one preferential
direction on
a NdGaO substrate.3
The references relied upon by the examiner are:
Gallagher et al. (Gallagher) 4,962,086 Oct. 9, 1990
Beasley et al. (Beasley) 5,047,385 Sep. 10, 1991
(filed Jul. 20, 1988)
C. B. Eom et al. (Eom), “Epitaxial and Smooth Films of a-Axis
Yba Cu O ,” 249 Science 1549 (Sep. 28, 1990).2 3 7
The following rejections are at issue in this appeal:
(1) Claims 1-9 are rejected under 35 U.S.C. § 112, first
paragraph, as containing new matter.
(2) Claims 1-9 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
Appeal No. 95-0537
Application No. 08/077,709
According to appellants, claims 1-9 which stand rejected2
under 35 U.S.C. § 112, first paragraph, as containing new
3
particularly point out and distinctly claim the subject matter
which applicants regard as the invention.
(3) Claims 1-6 and 8-9 are rejected under 35 U.S.C. §
112, first paragraph, as being based on a non-enabling
disclosure.
(4) Claims 1-3 and 5 are rejected under 35 U.S.C. § 101
as reading on inoperative species.
(5) Claims 1, 2 and 5 are rejected under 35 U.S.C.
§ 102(a)/103 as being unpatentable over Eom.
(6) Claims 1-9 are rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Eom and Gallagher.
(7) Claims 1, 2 and 5 are rejected under 35 U.S.C. §
102(e) as being anticipated by Beasley.
(8) Claims 1-9 are rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Beasley and
Gallagher.
New matter rejection under 35 U.S.C. § 112, first paragraph
Claims 1-9 are rejected under 35 U.S.C. § 112, first
paragraph, as containing new matter. According to the2
Appeal No. 95-0537
Application No. 08/077,709
matter stand or fall together (Brief, p. 13).
4
examiner (Answer, pp. 4-5):
In Amendment C, the phrase:
“(i.e. it has in-plane alignment or preferential
orientation)” is considered new matter, . . . .
Appeal No. 95-0537
Application No. 08/077,709
5
In Amendment D, most of the amendments to the
abstract, specification and claims are new matter.
Particularly, the phrase:
“at least one micron square”
is new matter. Other changes with regard to the
size and alignment of the superconducting film are
also new matter. . . .
Since the specification as originally filed
contains no literal recitation of the passages
above, they are new matter.
Appellant is required to cancel the new matter
in the response to this Office action.
At the outset we note that where alleged new matter is
confined to amendments to the specification, review of an
examiner’s requirement for cancellation is by way of petition.
MPEP § 608.04(c) (7th ed., Jul. 1998); see also In re
Hengehold, 440 F.2d 1395, 1403, 169 USPQ 473, 479 (CCPA 1971)
(an objection to the specification is not an appealable matter
under 35 U.S.C. § 134). Therefore, we decline to decide
whether the phrase “(i.e. it has in-plane alignment or
preferential orientation)” contains new matter since any
alleged new matter is confined to the specification.
However, where any alleged new matter is introduced into
or affects the claims, thus necessitating their rejection on
Appeal No. 95-0537
Application No. 08/077,709
In the Answer, the examiner indicates that the addition3
of "high temperature" to the claims is not considered new
matter (Answer, p. 14).
6
this ground, the question becomes an appealable one. MPEP §
608.04(c) (7th ed., Jul. 1998). For the reasons set forth by
appellants (see Brief, pp.16-17), we agree that appellants'
original disclosure provides descriptive support for the
following amendments to claims 1 and 6:3
(1) claim 1, line 4: before “aligned” delete “in-plane”
and insert --c-axis--,
(2) claim 1, line 4: after “aligned” delete “, and” and
insert --in one preferential direction on--,
(3) claim 6, line 4: before “preferential” add --c-axis
alignment in one--, and
(4) claim 6, line 4: after “preferential” delete “in
plane orientation, and” and insert --direction on--,
However, we disagree with appellants that the
application, as originally filed, provides descriptive support
for the phrase “of at least one micron square” in claims 1 and
6. The purpose of the written description requirement of 35
U.S.C. § 112, first paragraph, is to convey with reasonable
Appeal No. 95-0537
Application No. 08/077,709
7
clarity to those skilled in the art that, as of the filing
date sought, the applicant was in possession of the invention
now claimed. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1564,
19 USPQ2d 1111, 1117 (Fed. Cir. 1991). Compliance with the
written description requirement is a question of fact. In re
Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583 (Fed. Cir.
1996).
We note that there is no literal support in the
specification as originally filed for the phrase "of at least
one micron square." Nevertheless, appellants rely on a
declaration of Michael M. Eddy dated February 22, 1994, to
establish that the claims as amended do not contain new matter
(Brief, p. 16):
A ‘film’ would have been understood by those
skilled in the art at the time of filing the present
application to mean a material having an area larger
than several grain sizes. While grain sizes vary .
. . a region of one micron square would certainly be
a ‘film’ as opposed to a grain.
However, Eddy fails to provide any factual basis to explain
why one having ordinary skill in the art would have understood
the term "film" to mean a material having an area larger than
several grain sizes. Compare Alton, 76 F.3d at 1179, 37
Appeal No. 95-0537
Application No. 08/077,709
8
USPQ2d at 1583 (the declaration offers factual evidence in an
attempt to explain why one of ordinary skill in the art would
have understood the specification to describe the language at
issue). Therefore, we agree with the examiner that appellants
have failed to establish that the specification, as originally
filed, would have conveyed with reasonable clarity to one
having ordinary skill in the art that appellants were in
possession of the invention now claimed, namely, a film "of at
least one micron square." The new matter rejection under 35
U.S.C. § 112, first paragraph, is affirmed.
Rejection under 35 U.S.C. § 112, second paragraph
Claims 1-9 are rejected under 35 U.S.C. 112, second
paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which
applicants regard as the invention. Specifically, the
examiner regards the phrase "preferential direction" as being
ambiguous and "high temperature superconductive film" as being
indefinite.
According to the examiner, it is unclear what “direction”
is “preferential” (Answer, p.6). We disagree. One having
ordinary skill in the art would have understood that
Appeal No. 95-0537
Application No. 08/077,709
9
“preferential direction” as recited in the claims refers to
the direction in which the claimed c-axes of the film are
aligned (see Brief, p. 19). Compare In re Mattison, 509
F.2d 563, 565, 184 USPQ 484, 486 (CCPA 1975) (use of
“substantially increase” in a claim does not render that claim
indefinite under 35 U.S.C. § 112, second paragraph, since the
phrase does not stand in a vacuum but must be read in light of
the specification and when so read, one skilled in the art can
determine the scope of the claimed invention). Similarly, one
having ordinary skill in the art would have understood "high
temperature superconductive film" to mean a film made of
superconducting material which undergoes a phase transition
from a state of normal electrical resistivity to a
superconducting state at a temperature higher than 30K (see
Specification, p. 1, lines 9-13; Brief, pp. 17-18). See In re
Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA
1969) (claim cannot be read in a vacuum, but rather must be
read in light of specification to thereby interpret
limitations explicitly recited in claim). Therefore, the
rejection of claims 1-9 under 35 U.S.C. § 112, second
paragraph, is reversed.
Appeal No. 95-0537
Application No. 08/077,709
According to appellants, claims 1-6 and 8-9 which stand4
rejected under 35 U.S.C. § 112, first paragraph, as being
based on a non-enabling disclosure do not stand or fall
together (Brief, p. 13).
10
Rejection under 35 U.S.C. § 112, first paragraph
Claims 1-6 and 8-9 are rejected under 35 U.S.C. § 112,
first paragraph, as being based on a non-enabling disclosure. 4
According to the examiner, the unpredictable nature of the
superconductor art, as it existed at the time appellants filed
their application, requires that the claims be limited to the
specific superconductors disclosed in the specification. See
In re Fisher, 427 F.2d 833, 837-38, 166 USPQ 18, 22 (CCPA
1970) ("the scope of the claims must bear a reasonable
correlation to the scope of enablement provided by the
specification to persons of ordinary skill in the art. . . .
In cases involving unpredictable factors, such as most
chemical reactions and physiological activity, the scope of
enablement obviously varies inversely with the degree of
unpredictability of the factors involved.").
However, relying on In re Angstadt, 537 F.2d 498, 502,
190 USPQ 214, 218 (CCPA 1976), appellants argue that it is
improper to limit the present claims to only those particular
Appeal No. 95-0537
Application No. 08/077,709
11
substrates and superconductive films disclosed in the
specification (Brief, pp. 20-21). Appellants argue that the
specification enables a person skilled in the art to make the
superconductive device claimed using any superconducting film
which is “a-axis oriented” and has its c-axes “aligned in one
preferential direction” and any substrate which has an
“anisotropic surface cell” (Brief, p. 22). We disagree.
Although applicants are not required to disclose every
species encompassed by their claims, even in an unpredictable
art, each case must be determined on its own facts. In this
case, appellants have disclosed one embodiment of the claimed
invention, a YBCO or thallium superconductive film grown on a
neodymium gallate substrate. Compare Angstadt, 537 F.2d at
502, 190 USPQ at 218 (armed with the specification and its
40 working examples, one having ordinary skill in the art
would have been able to determine which catalyst complexes
within the scope of the claims work to produce hydroperoxides
and which do not). According to the examiner (Answer, p. 7):
Appellant is not enabled for all substrate/
superconductor composites. It was well known in the
art that the oxide superconductors react
unpredictably and have thermal mismatch problems
with many substrates, thereby destroying
Appeal No. 95-0537
Application No. 08/077,709
12
superconductivity (pages 267-268 of the “Engineer’s
Guide to High Tc Superconductivity” and Sahu et al,
p. 7, 2nd full paragraph). Relying upon Fisher, id.
[Fisher, 427 F.2d at 837-38, 166 USPQ at 22], it is
the Examiner’s position that the unpredictable
reactions between oxide superconductors and their
substrates requires that the claims be limited to
the specific substrate materials in the
specification.
Appellants have failed to establish otherwise. See In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984) ("after a prima facie case of unpatentability has been
established, the burden of going forward shifts to the
applicant"). Therefore, the rejection of claims 1-6 and 8-9
under 35 U.S.C. § 112, first paragraph, is affirmed.
Appeal No. 95-0537
Application No. 08/077,709
13
Rejection under 35 U.S.C. § 101
Claims 1-3 and 5 are rejected under 35 U.S.C. § 101 as
reading on inoperative species. However, the specification
discloses a preferred superconductive device comprising a YBCO
superconducting film, having greater than 90% a-axis oriented
and over 90% c-axis aligned in one direction, deposited on a
neodymium gallate substrate (Specification, p. 5, line 34-p.
7, line 4). Therefore, we reverse the rejection of claims 1-3
and 5 under 35 U.S.C. § 101. See Envirotech Corp. v. Al
George, Inc., 730 F.2d 753, 762, 221 USPQ 473, 480 (Fed.
Cir. 1984) ("the defense of non-utility cannot be sustained
without proof of total incapacity"); see also Brooktree Corp.
v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1571, 24
USPQ2d 1401, 1412 (Fed. Cir. 1992) ("[t]o violate §101 the
claimed device must be totally incapable of achieving a useful
result").
Rejection under 35 U.S.C. § 102(a)/103
Claims 1, 2 and 5 are rejected under 35 U.S.C. §
102(a)/103 as being unpatentable over Eom.
Claim 1 on appeal relates to a superconductive device
comprising a high temperature superconductive film "having at
Appeal No. 95-0537
Application No. 08/077,709
14
least 80% by volume a-axis oriented and c-axis aligned in one
preferential direction on a substrate having an anisotropic
surface cell." Eom discloses a-axis)oriented superconductive
films which have been grown epitaxially on SrTiO and LaAlO3 3
substrates. According to Eom (p. 1550, second column):
Figure 1 shows a planar view transmission
electron micrograph of a typical a-axis film.
Lattice fringes perpendicular to the c-axis are
clearly seen in the a-axis)oriented grains. The
a-axis)oriented YBCO grains are seen to be 100 to
500 D wide. The predominant a-axis grains lie along
one of two orthogonal directions, with their c-axes
along the substrate [100] or [010].
Eom continues (p. 1550, third paragraph):
Figure 2B shows the dependence of x-ray
intensity corresponding to the YBCO (102) reflection
as a function of azimuthal angle. The main peaks
correspond to the epitaxial arrangements
YBCO[001]/SrTiO [100] and YBCO[001]/SrTiO [010]. 3 3
Close to 99.9 volume percent of the a-axis grains
lie along these directions. [Emphasis added.]
Referring to Figure 2B of Eom, appellants point out
(Brief, pp. 7-8):
[T]he Eom film includes two peaks of substantially
the same size, one reflection at N = about 50E and
the other reflection at N = about 140E and,
therefore, represents that substantially half of the
CuO planes lie in one direction and the other half
in another direction which is about 90E from the
first.
Appeal No. 95-0537
Application No. 08/077,709
According to the examiner (Answer, p. 10), the rejection5
"is also being made under both 102/103, because Eom does not
'explicitly' disclose 'at least 1 micron squared'." Since,
for the reasons set forth above, the teachings of Eom fail to
expressly disclose or suggest the other limitations of claim
1, it is not necessary to address this additional limitation.
15
Appellants conclude, and we agree, that Eom discloses an a-
axis film where about 50% of the c-axes are aligned in one
direction and about 50% of the c-axes are aligned in another
direction (Brief, p. 23). Therefore, Eom fails to anticipate
the invention of claim 1. See Verdegaal Bros., Inc. v. Union
Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir.),
cert. denied, 484 U.S. 827 (1987) ("A claim is
anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a
single prior art reference."). The rejection of claims 1, 2
and 5 under 35 U.S.C. § 102(a)/103 is reversed.5
Rejection under 35 U.S.C. § 102(e)
Claims 1, 2 and 5 are rejected under 35 U.S.C. § 102(e)
as being anticipated by Beasley. Beasley discloses a method
of selectively growing an a-axis or a c-axis oriented film of
YBa Cu O . According to the examiner (Answer, p. 12):2 3 7-x
Beasley recognizes, as Applicant does, that lowering
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Application No. 08/077,709
16
the superconductor formation temperature is the key
parameter in forming epitaxial a-axis films.
Compare col. 3, line[s] 10-25 of Geballe [sic,
Beasley] with page 6 of Appellant's specification.
Appellants argue (Brief, p. 31):
[T]he present invention is not merely growing a-axis
films epitaxially. Rather, the present invention is
to be able to control the orientation of the c-axes
in an a-axis film. . . . No where does Beasley
discuss, disclose or even mention controlling the
positioning of the c-axes in an a-axis film.
[Emphasis in original.]
We agree with appellants that Beasley is silent as to the
alignment of c-axes in an a-axis film.
To the extent that both Beasley and appellants use lower
temperatures to produce their respective a-axis films, Beasley
recognizes that annealing at lower temperatures for an
extended period of time after deposition of the film produces
a-axis films (col. 3, lines 10-15):
Films as deposited are basically various
amorphous-like oxides according to the X-ray
diffraction data. Subsequently they have usually
been annealed for 3 hours at 650EC. followed by 1
hour at 750EC. and 1 hour at 850EC. Our experience
shows that these annealing steps are enough for a-
axis oriented films.
In contrast, appellants disclose that maintaining the
substrate at a lower temperature during deposition produces an
Appeal No. 95-0537
Application No. 08/077,709
17
a-axis film having c-axis alignment in one direction
(Specification, p. 6):
The substrate is heated in the laser ablation
apparatus prior to deposition of the film. For
films grown with a substrate temperature between 810
and 830EC, the majority of the film is c-axis
textured, with small amounts of a-axis grains being
formed. In the preferred embodiment, the substrate
temperature is initially made lower than this
temperature, preferably by from 50 to 100EC, to
promote a-axis nucleation . . . . In the
preferred embodiment, the substrate temperature was
held at 700EC during deposition. If desired,
following nucleation of the a-axis film, the
substrate temperature may be raised to ordinary
processing temperatures to enhance the film
crystallinity and superconducting properties of the
film.
Despite the above-identified differences, the examiner has
failed to explain how one having ordinary skill in the art
would have arrived at the claimed invention based on the
teachings in Beasley. See In re Oetiker, 977 F.2d 1443, 1444,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992) (the examiner bears the
initial burden of presenting a prima facie case of
unpatentability). Therefore, the rejection of claims 1, 2 and
5 under 35 U.S.C. § 102(e) as being anticipated by Beasley is
reversed.
Rejections under 35 U.S.C. § 103
Appeal No. 95-0537
Application No. 08/077,709
18
Claims 1-9 are rejected under 35 U.S.C. § 103 as being
unpatentable over (1) the combination of Eom and Gallagher and
(2) the combination of Beasley and Gallagher.
Claims 1-9 are directed to a superconductive device
comprising an a-axis film wherein the c-axes are aligned in
one
Appeal No. 95-0537
Application No. 08/077,709
19
preferential direction on a substrate. For the reasons set
forth above, Eom and Beasley fail to suggest the invention of
claims 1-9.
Gallagher discloses superconductive films which can be
epitaxially deposited on gallate substrates (col. 3, lines 54-
61). However, Gallagher adds nothing to the deficiencies of
Eom or Beasley. In contrast to appellants' invention,
Gallagher discloses a c-axis film. See col. 9, lines 50-52
("to grow epitaxial films with desirable superconducting
properties the c-axis is preferably normal to the substrate
interface"); col. 10, lines 6-11 (YBa Cu O films were2 3 x
epitaxially deposited on chemically polished LaGaO crystal3
wafers; these films are epitaxial with their c-axis normal to
the growth interface). Therefore, the rejections of claims 1-
9 under 35 U.S.C. § 103 as being unpatentable over (1) the
combination of Eom and Gallagher and (2) the combination of
Beasley and Gallagher are reversed.
Appeal No. 95-0537
Application No. 08/077,709
20
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
MICHAEL SOFOCLEOUS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ADRIENE LEPIANE HANLON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHUNG K. PAK )
Administrative Patent Judge )
ALH:svt
Appeal No. 95-0537
Application No. 08/077,709
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David B. Murphy
LYON & LYON
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