2020000084 (P.T.A.B. Oct. 26, 2020)

Neeraj Nepal et al.

Patent Trials and Appeals BoardOct 26, 2020

2020000084 (P.T.A.B. Oct. 26, 2020)

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. 14/571,826 12/16/2014 Neeraj Nepal 101918-US3 3057 26384 7590 10/26/2020 NAVAL RESEARCH LABORATORY ASSOCIATE COUNSEL (PATENTS) CODE 1008.2 4555 OVERLOOK AVENUE, S.W. WASHINGTON, DC 20375-5320 EXAMINER QI, HUA ART UNIT PAPER NUMBER 1714 NOTIFICATION DATE DELIVERY MODE 10/26/2020 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): patent.docketing@nrl.navy.mil PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NEERAJ NEPAL, CHARLES R. EDDY, NADEEMMULLAH A. MAHADIK, SYED B. QADRI, and MICHAEL J. MEHL Appeal 2020-000084 Application 14/571,826 Technology Center 1700 Before TERRY J. OWENS, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3, 5, 6, 10, 12, 14, and 15. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and under 37 C.F.R. § 41.50(b) enter new grounds of rejection. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as The Government of the United States of America (Appeal Br. 2). Appeal 2020-000084 Application 14/571,826 2 CLAIMED SUBJECT MATTER The claims are directed to a method for growing crystalline, epitaxial InN, GaN, and AlN materials. Claim 10, reproduced below, is illustrative of the claimed subject matter: 10. A method for growing crystalline, epitaxial InN, GaN, and AlN materials, the method comprising alternate growth via plasma-assisted atomic layer epitaxy of GaN and either InN or AlN to obtain an epitaxial film of InxGa1-xN, AlxGa1-xN, or AlxIn1-xN with an identical crystal structure throughout, wherein the method is effective to produce a full stoichiometric range of InxGa1-x N, AlxGa1-xN, AlxIn1-xN, or AlxInyGa1-(x-y)N materials such that x can be any number from 0 to l and, if present, y can also be any number from 0 to 1 as long as x+y totals between 0 and 1, inclusive; and wherein the method is performed entirely at a temperature of no greater than 500°C. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Kidoguchi US 6,136,626 Oct. 24, 2000 Ramdani US 2002/0096683 A1 July 25, 2002 Miyahara US 2006/0163605 A1 July 27, 2006 REJECTIONS The claims stand rejected as follows: claims 1, 3, 5, 6, 10, 12, 14, and 15 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; claims 1, 3, 5, 10, 12, and 14 under 35 U.S.C. § 103(a) over Kidoguchi in view of Ramdani; and claims 6 and 15 under 35 U.S.C. § 103(a) over Kidoguchi in view of Ramdani and Miyahara. Appeal 2020-000084 Application 14/571,826 3 OPINION Rejection under 35 U.S.C. § 112, first paragraph For an applicant to comply with the 35 U.S.C. § 112, first paragraph, written description requirement, the applicant’s specification must “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.” Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991)). The independent claims (1 and 10) require an epitaxial film “with an identical crystal structure throughout.” That film feature is not disclosed in the Appellant’s original Specification. The Appellant’s original Specification states that diffraction patterns on a particular sample (InN on a-plane Al2O3) indicate that it “has an epitaxial nature and not a powder/polycrystalline nature” (Spec. ¶ 20). The Appellant construes this statement as meaning that “the technique can produce a single crystal” (Appeal Br. 3), and argues that “one of ordinary skill in the art would understand this to mean that the product produced by the claimed processes is described as having ‘an identical crystal structure throughout.’” (Id.). The Appellant relies (id.) upon a Declaration under 37 CFR 1.132 wherein Dr. Charles R. Eddy, Jr. states: “In my opinion the description of the samples as ‘epitaxial’ would be understood by a person of ordinary skill in the art to indicate that they indeed had the same crystal structure throughout” (Decl. ¶ 4). “Epitaxy” means “[t]he growth of the crystals of one substance on the crystal face of another substance, such that the crystalline substrates of both Appeal 2020-000084 Application 14/571,826 4 substances have the same structural orientation.”2 Thus, for an epitaxial film to have an identical crystal structure throughout the film, it must have the same structural orientation as the underlying crystalline substance at each point on the film in both the film’s thickness and width directions, which requires that the underlying crystalline substance’s entire surface has an identical crystal structure. The Appellant’s original Specification does not indicate possession of such a combination of epitaxial film and underlying crystalline substance. Consequently, we affirm the written description rejection. Rejections under 35 U.S.C. § 103 We need address only the independent claims (1 and 10). Kidoguchi discloses (col. 10, ll. 31–38): [A]s shown in FIG. 8, an active layer 86 with a layered structure including InN 82 layers and GaN layers 84 can be provided between the cladding layers 36 and 40. By alternately layering the InN layers 82 having a thickness 35 of a 1-atom layer and the GaN layers 84 having a thickness of a 9-atoms layer in the active layer 86, the active layer 86 having a composition of InN0.1Ga0.9N as a whole can be formed. Ramdani discloses: [A] compound semiconductor layer 96, such as gallium nitride (GaN) is grown over the SiC surface by way of MBE, CVD, MOCVD, MEE, ALE, PVD, CSD, PLD, or the like to form a high quality compound semiconductor material for device formation. More specifically, the deposition of GaN and GaN based systems such as GaInN and AlGaN will result in the formation of dislocation nets confined at the silicon/amorphous region. The resulting nitride containing compound semiconductor material may comprise elements 2 https://www.thefreedictionary.com/Epitaxial Appeal 2020-000084 Application 14/571,826 5 from groups III, IV and V of the periodic table and is defect free. [(¶ 76)] * * * Referring to FIG. 19, the structure shown is subjected to a nitrogen source under conditions sufficient to nitride monocrystalline layer 206 partially or totally to form a cubic nitride layer 208. For example, nitridation may occur using RF plasma, ECR plasma or Eximer [sic] laser with N2 or NH3, as the nitrogen source at a temperature of from about room temperature to about 700 degrees Celsius. [(¶ 89)] The Examiner finds that Kidoguchi discloses a method “to obtain a film (layer 86) having a composition In0.1Ga0.9N as a whole, e.g., x=0.1 (fig 8 and col 10 lines 31 to 54), within the instantly claimed full stoichiometric range of InxGa1-xN such that x is within the range of from 0 to 1” (Final Rej. 4). The Examiner, however, does not establish that Kidoguchi discloses or would have suggested a method effective for producing the full stoichiometric range of InxGa1-xN where x can be any number from 0 to 1. The Examiner finds that Ramdani uses a plasma assisted method comprising atomic layer epitaxy (ALE) to form nitride layers at about room temperature to about 700 ºC (Final Rej. 5). In reaching that finding, the Examiner combines Ramdani’s growth of a compound semiconductor layer by ALE (¶¶ 76, 81) with Ramdani’s nitridation of a monocrystalline compound semiconductor layer (206) using RF or ECR plasma at about room temperature to about 700 ºC (¶ 89). The Examiner does not establish that Ramdani discloses compound semiconductor nitride layer growth via plasma-assisted ALE. Appeal 2020-000084 Application 14/571,826 6 Thus, the Examiner has not set forth a factual basis that is sufficient to support a conclusion of obviousness of the Appellant’s claimed invention. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). Accordingly, we reverse the rejections. New grounds of Rejection Under 37 C.F.R. § 41.50(b) we enter the following new grounds of rejection: 1) Claims 1, 3, 5, 6, 10, 12, 14, and 15 are rejected under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. 2) Claims 1, 3, 5, 6, 10, 12, 14, and 15 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Rejection under 35 U.S.C. § 112, second paragraph “[T]he indefiniteness inquiry asks whether the claims ‘circumscribe a particular area with a reasonable degree of precision and particularity.’” Marley Mouldings Ltd. v. Mikron Industries Inc., 417 F.3d 1356, 1359 (Fed. Cir. 2005) (quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971)). We need address only the independent claims (1 and 10). The indefiniteness of the independent claims renders their dependent claims indefinite. a) Claims 1 and 10 are unclear as to whether meeting the limitation “the method is effective to produce a full stoichiometric range of InxGa1-xN, Appeal 2020-000084 Application 14/571,826 7 AlxGa1-xN, AlxIn1-xN, or AlxInyGa1-(x-y)N, materials such that x can be any number from 0 to 1 and, if present, y can also be any number from 0 to 1 as long as x+y totals between 0 and 1, inclusive” requires a method which produces compositions of any of those materials having the full range of x or x+y from 0 to 1, or is met by a method which produces any of those materials having an x or x+y value or range within 0 to 1. b) Claims 1 and 10 are unclear as to how the method can comprise “alternate growth via plasma-assisted atomic layer epitaxy of GaN and either InN or AlN,” which requires GaN, yet produce AlxIn1-xN which contains no Ga or produce InxGa1-xN, AlxGa1-xN, or AlxInyGa1-(x-y)N which contain no Ga when x=1. c) Claim 10 is unclear as to how the epitaxial film can be “of InxGa1-xN, AlxGa1-xN, or AlxIn1-xN,” yet the method can produce a full stoichiometric range of AlxInyGa1-(x-y)N. Rejection under 35 U.S.C. § 112, first paragraph A specification complies with the 35 U.S.C. § 112, first paragraph, enablement requirement if it allows those of ordinary skill in the art to make and use the claimed invention without undue experimentation. See In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). We need address only the independent claims (1 and 10). a) Claims 1 and 10 are broader than the enabling disclosure. Those claims encompass all methods for growing crystalline, epitaxial InN, GaN, and AlN materials by alternate growth via plasma3-assisted 3 Claim 1 requires N2 plasma. Appeal 2020-000084 Application 14/571,826 8 atomic layer epitaxy of GaN and either InN or AlN at a temperature no greater than 500 ºC to obtain the full stoichiometric range of InxGa1-xN, AlxGa1-xN, AlxIn1-xN, or AlxInyGa1-(x-y)N. The Declaration of Charles R. Eddy, Jr., however, indicates that achieving the full stoichiometric range requires a non-thermal equilibrium growth process (Decl. ¶ 7) which is not required by the claims. Also, the claims lack enabling parameters for the non-thermal equilibrium growth process. b) The Appellant’s Specification states (¶ 31): “Quaternary alloys of the form AlxInyGa1-(x-y)N are also believed to be obtainable using the above techniques. It is expected that the full range of x and y would be achievable.” That disclosure indicates the Appellant has not achieved the full stoichiometric range of AlxInyGa1-(x-y)N, and does not indicate how one of ordinary skill in the art could do so without undue experimentation. c) The Appellant’s Specification does not enable the claim 1 and claim 10 step of “alternate growth via plasma-assisted atomic layer epitaxy of GaN and either InN or AlN,” which requires GaN, yet produces AlxIn1-xN which contains no Ga or produces InxGa1-xN, AlxGa1-xN, or AlxInyGa1-(x-y)N which contain no Ga when x=1. d) The Appellant’s Specification does not enable the claim 10 growth which obtains “an epitaxial film of InxGa1-xN, AlxGa1-xN, or AlxIn1-xN,” which does not include AlxInyGa1-(x-y)N, yet is effective to produce a full stoichiometric range of AlxInyGa1-(x-y)N. CONCLUSION The Examiner’s rejection under 35 U.S.C. § 112, first paragraph, is affirmed. The Examiner’s rejections under 35 U.S.C. § 103 are reversed. Appeal 2020-000084 Application 14/571,826 9 New rejections of claims 1, 3, 5, 6, 10, 12, 14, and 15 are entered under 37 C.F.R. § 41.50(b). DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s) /Basis Affirmed Reversed New Ground 1, 3, 5, 6, 10, 12, 14, 15 112 Written Description 1, 3, 5, 6, 10, 12, 14, 15 1, 3, 5, 10, 12, 14 103 Kidoguchi, Ramdani 1, 3, 5, 10, 12, 14 6, 15 103 Kidoguchi, Ramdani, Miyahara 6, 15 1, 3, 5, 6, 10, 12, 14, 15 112 Indefinite- ness 1, 3, 5, 6, 10, 12, 14, 15 1, 3, 5, 6, 10, 12, 14, 15 112 Non- enablement 1, 3, 5, 6, 10, 12, 14, 15 Overall Outcome 1, 3, 5, 6, 10, 12, 14, 15 1, 3, 5, 6, 10, 12, 14, 15 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). In addition to affirming the Examiner's rejection(s) of one or more Appeal 2020-000084 Application 14/571,826 10 claims, this decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) which provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. AFFIRMED, 37 C.F.R. § 41.50(b)