Makoto Saito et al.

Patent Trials and Appeals Board

Aug 20, 2019

12474134 - (D) (P.T.A.B. Aug. 20, 2019)

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 08/20/2019
GATES & COOPER LLP (General)
HOWARD HUGHES CENTER
6060 CENTER DRIVE
SUITE 830
LOS ANGELES, CA 90045
EXAMINER
BRATLAND JR, KENNETH A
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
08/20/2019 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):
docketing-us@gates-cooper.com
gates-cooper@blackhillsip.com
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 2018-004610
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 finally rejected claims 12, 14, 19–22, 30, and 31 of
Application 12/474,134 under 35 U.S.C. § 103(a) as obvious. Final Act.
(July 20, 2017). Appellants1 seek reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 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 2018-004610
Application 12/474,134

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BACKGROUND
The ’134 Application describes methods for high-speed solvo-thermal
growth of high quality hexagonal würtzite-type single crystals of Group III-
nitride materials. Spec. 4.
Claim 12 is representative of the ’134 Application’s claims and is
reproduced from the Claims Appendix of the Appeal Brief with the disputed
limitation italicized.
12. A method of growing a III-nitride single bulk crystal with
a hexagonal würtzite structure, comprising:
performing solvo-thermal crystal growth on a III-nitride seed
crystal having a growth surface comprising a semipolar plane to
create the III-nitride single bulk crystal,
wherein the III-nitride seed crystal is grown in a [0001]
direction and sliced into a shape having a desired orientation,
and the solvo-thermal crystal growth on the growth surface of
the III-nitride seed crystal comprising the semi polar plane
results in a smoother surface for the III-nitride single bulk
crystal as compared to solvo-thermal crystal growth on a III-
nitride seed crystal having a growth surface comprising a polar
plane.
Appeal Br. 11 (emphasis and some paragraphing added).
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Application 12/474,134

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REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 12, 14, 19–21, 30, and 31 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Callahan,2
Baker,3 and Funato.4 Final Act. 2.
2. Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Callahan, Baker, Funato, and Dwilinski.5 Final
Act. 8.
DISCUSSION
Rejection 1. Appellants only present specific arguments for reversal
of this rejection with respect to claim 12. Appeal Br. 4–8. Appellants
stipulate that claims 14, 19–21, 30, and 31 will stand or fall with claim 12.
Id. at 8–9. Accordingly, we limit our discussion to claim 12.
The Examiner rejected claim 12 as obvious over the combination of
Callahan, Baker, and Funato. Final Act. 2–5. The Examiner found that
Callahan describes solvo-thermal growth of a Group III-nitride crystal on a

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 Troy J. Baker et al., Characterization of Planar Semipolar Gallium Nitride
Films on Sapphire Substrates, 45 Jap. J. Appl. Phys. 1154–57 (February 3,
2006).
4 Mitsuru Funato et al., Blue, Green, and Amber InGaN/GaN Light-Emitting
Diodes on Semipolar {11-22} GaN Bulk Substrates, 45 Jap. J. Appl. Phys.
L659–L662 (June 30, 2006).
5 WO 2006/057463 A1, published June 1, 2006. The Examiner cited the US
national phase filing which issued on March 15, 2011 as US 7,905,957 B2.
Final Act. 2.
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Application 12/474,134

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III-nitride seed crystal to create a III-nitride single bulk crystal. Id. at 2.
The Examiner also found that Callahan does not expressly describe this
crystal growth as occurring on a semipolar plane of the seed crystal. Id. at 3.
The Examiner further found that Callahan describes solvo-thermal
techniques as a lower cost alternative to HVPE growth methods. Id.
The Examiner found that Baker describes growth of planar semipolar
III-nitride films on a sapphire substrate. Id.
Based on these findings, the Examiner concluded that
a person of ordinary skill in the art would be inclined to utilize
the ammonothermal growth method of Callahan to grow lower-
cost and high-quality semipolar Group III-nitride compound
semiconductors on a seed crystal comprised of a semipolar
plane such as (11-22) GaN produced according to the method of
Baker with the motivation for doing so being to take advantage
of a low-cost crystal growth technique which is capable of
growing semipolar GaN crystals which eliminate or reduce the
spontaneous and piezoelectric polarization effects in GaN
optoelectronic devices occurring on polar or C-plane
crystallographic surfaces.
Id. at 3–4 (emphasis added).
The Examiner found that the combination of Callahan and Baker does
not “teach that the III-nitride seed crystal is grown in a [0001] direction and
sliced into a shape having a desired orientation.” Id. at 5. The Examiner
further found that Funato describes obtaining semipolar {11-22} GaN
substrates for subsequent film growth by growing C-oriented GaN bulk
crystals on sapphire substrates then cutting the resulting crystals in the
desired crystallographic direction. Id.
Based on these findings, the Examiner found that use of Funato’s cut
material is seed crystals in the combined process of Callahan and Baker
would been obvious to a person having ordinary skill in the art at the time of
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Application 12/474,134

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the invention because it “would involve nothing more than the use of a
known process and/or material for its intended use.” Id.
Appellants argue that the rejection of claim 12 should be reversed
because the combination of Callahan and Baker is improper. Appeal Br. 5.
In particular, Appellants argue that Baker’s process produces films of GaN
on a sapphire substrate. Id. Appellants argue that Baker’s material cannot
be used as seed crystals in Callahan’s solvo-thermal process because Baker
does not describe separation of the semipolar GaN film from the sapphire.
Id. Appellants assert that “no one of skill in the art would use the semipolar
(11-22) GaN films combined with the sapphire substrate as a seed crystal for
solvo-thermal growth.” Id.
This argument is not persuasive for two reasons.
First, it does not address the rejection the Examiner actually made.
The Examiner rejected claim 12 based upon these of Funato’s cut material as
seed crystals. Final Act. 5. Baker’s (11-22) semipolar film grown on a
sapphire substrate is not used in the process the Examiner found to be
described or suggested by the combination of Callahan, Baker, and Funato.
Second, Appellants assertion that no one would use Baker’s material
in Callahan’s process is attorney argument and is not supported by citation
to the evidence of record or a reasoned explanation of the basis for this
assertion. As such, it is entitled to little or no weight.
Moreover even if Appellants were correct, Baker is not a necessary
component of a § 103(a) rejection of claim 12. Funato contains a
description that is cumulative of each portion of Baker that is used in the
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Application 12/474,134

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final rejection.6 Because Funato is cumulative of Baker, the Examiner could
have rejected claim 12 as unpatentable over the combination of Callahan and
Funato without Baker.
Appellants also argue that the combination of Callahan, Baker, and
Funato is improper because Funato’s (11-22) GaN is not suitable for use as
seed crystal in Callahan’s solvo-thermal process. Appellants argue that
Funato’s crystals likely are too large to fit into Callahan’s auto claims.
Appeal Br. 7.
This argument is not persuasive because it presumes that Funato’s
crystals must be bodily incorporated into the process described in Callahan,
including the exact equipment used by Callahan. This argument is
erroneous. “It is well-established that a determination of obviousness based
on teachings from multiple references does not require an actual, physical
substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
2012) (citing In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc)); see
also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“To justify combining
reference teachings in support of a rejection it is not necessary that a device
shown in one reference can be physically inserted into the device shown in
the other.”).
In view of the foregoing, we affirm the rejection of claim 12 as
unpatentable over the combination of Callahan, Baker, and Funato.

6 For example, Funato describes the advantages of fabricating semiconductor
components on a semipolar GaN surface. See Funato L659. This is
cumulative of Baker's description, which the Examiner cited in the rejection.
See Final Act. 3 (citing Baker L154).
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Application 12/474,134

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Rejection 2. The Examiner rejected claim 22 as unpatentable over
the combination of Callahan, Baker, Funato, Dwilinski. Final Act. 8.
Appellants stipulate that claim 22—which depends from claim 12—stands
or falls with its parent independent claim. Appeal Br. 10.
Because we have affirmed the rejection of claim 12, we also affirm
the rejection of claim 22.
CONCLUSION
For the reasons set forth above we affirm the rejection of claims 12,
14, 19–22, 30, and 31 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