SILCOTEK CORP.

Patent Trials and Appeals Board

Jun 7, 2021

2020003571 (P.T.A.B. Jun. 7, 2021)

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.
15/004,455 01/22/2016 Thomas F. VEZZA 002938.00043 2481
174989 7590 06/07/2021
SilcoTek/
Saxton & Stump LLC
280 Granite Run Drive
Suite 300
Lancaster, PA 17601
EXAMINER
LAWLER, JOHN VINCENT
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
06/07/2021 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):
geoff.white@silcotek.com
ip@silcotek.com
patents@saxtonstump.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS F. VEZZA, STEVEN A. CONDO,
NICHOLAS PETER DESKEVICH,
JAMES B. MATTZELA, and
PAUL H. SILVIS
Appeal 2020-003571
Application 15/004,455
Technology Center 1700
Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and
JAMES C. HOUSEL, Administrative Patent Judges.
HOUSEL, 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 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies SilcoTek Corporation as the real party in
interest. Appeal Brief (“Appeal Br.”) filed April 22, 2019, 1.
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Application 15/004,455
2
CLAIMED SUBJECT MATTER
The invention relates to thermal chemical vapor deposition,
particularly diffusion-rate-limited thermal chemical vapor deposition.
Specification (“Spec.”) filed January 22, 2016, ¶ 1.
Claims 1 and 19, reproduced below from the Claims Appendix to the
Appeal Brief, are illustrative of the claimed subject matter:
1. An article, comprising:
a substrate; and
a thermal chemical vapor deposition coating on the substrate;
wherein the thermal chemical vapor deposition coating includes
properties from being produced by at least temporarily enclosed
diffusion-rate-limited thermal chemical vapor deposition.
19. A thermal chemical vapor deposition process,
comprising:
introducing a gaseous species to a vessel; and
producing a thermal chemical vapor deposition coating on an
article within the vessel by an at least temporarily enclosed
diffusion-rate-limited reaction of the gaseous species.

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REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Dubois et al.
(“Dubois”)
US 4,579,752 Apr. 1, 1986
Jasinski et al.
(“Jasinski”)
US 4,684,542 Aug. 4, 1987
Amazawa et al.
(“Amazawa”)
US 4,956,204 Sept. 11, 1990
Liyanage et al.
(“Liyanage”)
US 5,299,731 Apr. 5, 1994
Miyasaka US 5,510,146 Apr. 23, 1996
Thakur et al.
(“Thakur”)
US 2003/0172872 A1 Sept. 18, 2003
Ciprian Iliescu and Bangtao Chen, Thick and Low-Stress PECVD
Amorphous Silicon for MEMS Applications, 18 J. MICROMECH.
MICROENG. 015024, 1–8 (2008) (“Iliescu”).
REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections:
1. Claims 1–20 under 35 U.S.C. § 112(a) as failing to comply
with the enablement requirement;
2. Claims 1–3, 12, 13, and 16–18 under 35 U.S.C. § 102(a)(1)
as anticipated by or, in the alternative under 35 U.S.C. § 103
as unpatentable over Miyasaka;
3. Claims 4–7 under 35 U.S.C. § 103 as unpatentable over
Miyasaka in view of Iliescu;
4. Claims 9–11 under 35 U.S.C. § 103 as unpatentable over
Miyasaka in view of Jasinski; and
5. Claims 14 and 15 under 35 U.S.C. § 103 as unpatentable
over Miyasaka in view of Dubois and Liyanage.
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OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering
Appellant’s arguments and the evidence of record, we are not persuaded of
reversible error in the stated rejections. Therefore, we affirm the Examiner’s
enablement, anticipation, and obviousness rejections based substantially on
the fact findings, reasoning, and conclusions set forth in the Final Office
Action and the Examiner’s Answer, which we adopt as our own. We offer
the following for emphasis only.
Rejection 1: Enablement
The Examiner rejects claims 1–20 under 35 U.S.C. § 112(a) as failing
to comply with the enablement requirement. Examiner’s Answer (“Ans.”)
dated December 18, 2019, 3–7. As to claim 1, the Examiner finds that the
Specification fails to provide direction to allow those skilled in the art to
determine whether or not a CVD coating was produced via a diffusion-rate-
limited process. Id. at 3. As to claim 19, the Examiner finds that the
Specification fails to provide direction to allow those skilled in the art to
determine whether or not a CVD coating process is a diffusion-rate-limited
process. Id. at 5. The Examiner finds that the Specification fails to provide
any working example and fails to disclose specific operating conditions
necessary and sufficient to enable the production of CVD coatings by a
diffusion-rate-limited process. Id. at 3, 5.
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The Examiner finds that the Specification merely discloses ranges for
various inputs and resulting product properties without providing sufficient
instruction to implement a diffusion-rate-limited process and produce a
diffusion-rate-limited CVD coating. Ans. 5. The Examiner also finds that the
Specification fails to disclose a single set of operating conditions for a CVD
process unique to diffusion-rate-limited processes. Id. The Examiner finds
that the Specification merely recites broad ranges for typical CVD process
variables, but does not identify any combination of variables necessary and
sufficient to create a diffusion-rate-limited CVD process. Id. at 5–6. Because
of the lack of specific guidance, the Examiner concludes that undue
experimentation would be required for the skilled artisan to identify the
appropriate operating conditions necessary and sufficient to perform a
diffusion-rate-limited CVD process. Id. at 6. Also, the Examiner finds that
the Specification merely recites broad property ranges for possible final
products, but does not identify which properties are unique to diffusion-rate-
limited CVD processes. Id.
In contrast, the Examiner finds that Amazawa discloses a low-
pressure CVD process in significant detail including specific descriptions of
the apparatus, process, and product to enable those skilled in the art to
perform such a process and produce such products. Ans. 6–7. The Examiner
also finds that Appellant’s Specification fails to provide guidance sufficient
to determine whether or not a CVD process was operated in an “at least
temporarily enclosed diffusion-rate-limited” manner as recited in the claims
on appeal. Id. at 7.
Appellant argues that the enablement requirement does not require
that those skilled in the art are able to determine if a CVD coating was
produced by a diffusion-rate-limited process. Appeal Br. 2. Instead,
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Appellant contends that the enablement requirement merely requires that a
skilled artisan is able to produce a CVD coating via a diffusion-rate-limited
process. Id. Appellant asserts that Specification paragraph 31 “explains the
concept of diffusion rate limited [CVD] by identifying a specific relationship
of parameters in an equation that allows for those skilled in the art to
perform diffusion rate limited [CVD].” Id. at 3. Appellant asserts that
Specification paragraph 12 “explains that the concept of being ‘at least
temporarily enclosed’ is in contrast to flow-through techniques and
involving a finite volume, such that those skilled in the art would understand
the term does not encompass flow through techniques.” Id.
Appellant further argues that the Examiner’s analysis is not
reasonable because paragraph 31 “provides very specific relationships and
parameters for [process] inputs within [the disclosed] ranges that allow
diffusion rate limited [CVD],” and the disclosed equation is “extremely
detailed.” Appeal Br. 3. Appellant also contends that the Examiner’s
analysis was improper because the Examiner relied on an internet search for
the phrase, “at least temporarily enclosed” CVD and required that the term
“temporarily” be defined. Id. Further, Appellant contends that the
Examiner’s analysis was improper because it fails to consider all the claims.
Id. In this regard, Appellant asserts that claim 19 is expressly limited to only
one gas component, and claim 20 limits this gas to a silane-containing
species. Id. at 4.
Appellant’s arguments are neither persuasive of reversible error in the
Examiner’s enablement rejection nor in establishing that the Specification
sufficiently describes the claimed invention so as to enable those skilled in
this art to make and use the claimed product and process.
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The first paragraph of 35 U.S.C. § 112 requires, inter
alia, that the specification of a patent enable any person skilled
in the art to which it pertains to make and use the claimed
invention. Although the statute does not say so, enablement
requires that the specification teach those in the art to make and
use the invention without “undue experimentation.”
In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991); see also In re Wright, 999
F.2d 1557, 1561 (Fed. Cir. 1993).
To determine whether the necessary experimentation is undue, we
look at factors including:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). “The test is not merely
quantitative, since a considerable amount of experimentation is permissible,
if it is merely routine, or if the specification in question provides a
reasonable amount of guidance with respect to the direction in which the
experimentation should proceed.” Id. (citing In re Angstadt, 537 F.2d 498,
502–04 (CCPA 1976)).
Appellant discloses that a thermal CVD process includes reacting one
or more gases in one or more steps within one or both of a vessel and a
chamber to form a thermal CVD coating on the surface of an article.
Spec. ¶ 12. Appellant discloses that the article is a tube that also serves as
the vessel, the interior of which is the surface coated with the thermal CVD
coating. Id. Appellant further discloses that, additionally or alternatively, in
other embodiments, the vessel and/or chamber are independent structures
from the article, “such as a thermal oven chamber, an independent vessel
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structure, or any other structure having a finite volume that is configured to
be at least temporarily enclosed (in contrast to flow-through arrangements
used in other techniques).” Id. Importantly, Appellant does not disclose that,
in the embodiment where the article to be coated is a tube that also serves as
a vessel, the tube is “at least temporarily enclosed” during the thermal CVD
process. Thus, it is not clear whether the limitation that the vessel or
chamber be “at least temporarily enclosed” is a necessary, much less
sufficient, requirement in order for the thermal CVD process to be diffusion-
rate-limited.
Moreover, we note that flow-through CVD reactors typically include
appropriate piping and valves in order to control gas flow through the
reactor. When gas flow is stopped, the reactor is temporarily enclosed, as
paragraph 12 requires. Indeed, Appellant discloses that, in one embodiment,
one or more gases are introduced to the vessel or chamber “through
controlled flow to achieve the diffusion-rate-limited thermal [CVD].” Spec.
¶ 23. Appellant further discloses that “[s]uch control is capable through any
suitable techniques and/or configurations,” and lists flow restrictors, mass
flow controllers, pulses, valves, fritted gaskets, and restrictors as examples.
Id. As such, the Specification does not consistently require that diffusion-
rate-limited thermal CVD use an at least temporarily enclosed vessel,
without flow conditions.
In Specification paragraph 31, Appellant discloses that, “[a]lthough
not intending to be bound by theory, in one embodiment, the diffusion-rate-
limited thermal CVD is based upon flux to a surface (J1), reaction flux (J2),
gas concentration (Cg), concentration on the surface (Cs), gas phase mass
transport coefficient (hg), and surface reaction rate (ks).” Appellant also
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discloses “[i]n a further embodiment, the relationship is represented by the
following equation:

According to this embodiment, the gas phase mass transport coefficient (hg)
is much less than the surface reaction rate (ks), resulting in the diffusion-
rate-limited thermal CVD.” Spec. ¶ 31. However, in each instance,
Appellant limits the disclosed relationships to “one embodiment” or “a
further embodiment” such that it is not clear that either of these relationships
is universally required for all diffusion-rate-limited thermal CVD processes
encompassed by the claims. In addition, it is not clear why in one
embodiment, diffusion-rate-limited thermal CVD is based on the variables,
J1, J2, Cg, Cs, hg, and ks, whereas in the other embodiment, diffusion-rate-
limited thermal CVD is based only on Cg, hG, and kS.
Moreover, in the first embodiment, Appellant merely describes the
parameters that the diffusion-rate-limited thermal CVD process is based on,
but does not describe any values for these parameters necessary to achieve a
diffusion-rate-limited process. In the second (further) embodiment,
Appellant merely indicates that the gas phase mass transport coefficient (hG)
is much less than the surface reaction rate (kS), but fails to describe any
process values for hG, kS, and Cg necessary to achieve such a relationship,
nor identify what the variable, ν, represents. In other words, Appellant fails
to describe how to achieve a surface reaction rate that is greater than a gas
phase mass transport coefficient, especially without regard to the gas
concentration.
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As the Examiner finds, Appellant discloses very broad ranges of a
variety of parameters, but does not identify any single combination of
parameter values necessary and sufficient to perform a diffusion-rate-limited
thermal CVD process, as opposed to non-diffusion-rate-limited thermal
CVD processes. Appellant fails to disclose how to vary these parameters
within the disclosed ranges to achieve a diffusion-rate-limited versus non-
diffusion-rate-limited process. Indeed, Appellant fails to disclose how to
vary these parameters within the disclosed ranges according to the equation
set forth in paragraph 31 to achieve a diffusion-rate-limited thermal CVD
process.
We further note that Appellant broadly describes how diffusion-rate-
limited thermal CVD coated articles and processes differ from articles
coated by other coating processes merely by stating that one or more
features are better, e.g., increased, improved, narrower tolerances, etc. See
Spec. ¶ 11; see also ¶ 27 (reciting properties distinguishable from that which
would be produced by reaction-rate-limited thermal CVD without
specificity). Appellant fails to identify any one feature/property or
combination of features/properties uniquely identifying an article as
produced by a diffusion-rate-limited process.
Turning to the claims, we note that the dependent article claims either
recite a single property of the article (claims 2–13), what the substrate
includes (claims 14 and 15), or the treatment temperature of the substrate
(claims 16–18). None of these claims limit or define sufficient parameters to
enable those skilled in the art to make the article by diffusion-rate-limited
thermal CVD. Dependent process claim 20 recites that the gaseous species
introduced to the vessel is a silane-containing species including 10–20 vol.%
silane and an inert gas. Because silane and inert gas are commonly used in
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CVD, this claim does not provide any guidance sufficient to enable those
skilled in the art to perform diffusion-rate-limited thermal CVD.
Accordingly, Appellant’s claims, like the Specification, merely broadly
recite diffusion-rate-limited thermal CVD without providing any details
sufficient to guide an ordinary artisan to make and use the claimed article
and process.
We note that Appellant does not direct our attention to any evidence
of record demonstrating the state of the art and relative skill of those in the
art are such that the present Specification is sufficient to enable the claimed
invention. Weighing each of the Wands factors, especially the lack of
sufficient direction or guidance, the lack of any working examples, and the
breadth of the claims as discussed above, we conclude that a preponderance
of the evidence supports the Examiner’s determination that claims 1–20 fail
to comply with the enablement requirement.
Rejection 2: Anticipation/Obviousness based on Miyasaka
The Examiner rejects claims 1–3, 12, 13, and 16–18 under 35 U.S.C.
§ 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as
unpatentable over Miyasaka. Ans. 7–9. Because Appellant does not argue
the claims separately (Appeal Br. 4–5), we select claim 1 as representative
and claims 2, 3, 12, 13, and 16–18 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv) (2018).
The Examiner finds that Miyasaka teaches an article, though not
necessarily made by diffusion-rate-limited thermal CVD (Miyasaka teaches
low-pressure thermal CVD), that is indistinguishable from the article recited
in claim 1 because it includes a substrate with a thermal CVD coating. Ans.
7–8, citing In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985) and In re
Marosi, 710 F.2d 798, 802 (Fed. Cir. 1983). Appellant argues that the
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Examiner, though acknowledging that the processes of making are different,
has not shown how the product of claim 1 is the same as or obvious from
Miyasaka’s product. Appeal Br. 4–5. Appellant notes that the claim “recites
that the coating includes properties from being produced by . . . at least
temporarily enclosed diffusion-rate-limited thermal [CVD].’” Id. at 5.
According to Appellant, “[i]nterpretations of claim 1 with no distinguishable
property, are outside the scope of the claimed invention,” and thus claim 1
cannot be interpreted as a product-by-process claim. Id.
Appellant’s arguments are not persuasive of reversible error because
Appellant fails to identify with any particularity any difference or
distinguishing property of the claim 1 article from Miyasaka’s article.
Because claim 1 includes product-by-process recitations, “determination of
patentability is based on the product itself,” not on “its method of
production.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citations
omitted). “If the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.” Id. (citation
omitted).
For product-by-process claims, the Examiner “bears a lesser burden of
proof in making out a case of prima facie obviousness for product-by-
process claims because of their peculiar nature than would be the case when
a product is claimed in the more conventional fashion.” In re Fessmann, 489
F.2d 742, 744 (CCPA 1974). Thus, “when the prior art discloses a product
which reasonably appears to be either identical with or only slightly different
than a product claimed in a product-by-process claim, a rejection based
alternatively on either section 102 or section 103 of the statute is eminently
fair and acceptable.” Id. (quote and citation omitted). Once the examiner
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establishes a prima facie case of anticipation or obviousness, the burden “‘to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product’” shifts to Appellant. Thorpe, 777
F.2d at 698 (citation omitted). “Where a product-by-process claim is rejected
over a prior art product that appears to be identical, although produced by a
different process, the burden is upon the applicants to come forward with
evidence establishing an unobvious difference between the claimed product
and the prior art product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983);
see also, In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
As the Examiner finds, Miyasaka teaches a low-pressure thermal
CVD process for forming a semiconductor film on a substrate. Miyasaka
Abstract. Miyasaka performs this CVD process in a reaction chamber 101
into which a raw material gas such as silane and an inert gas are introduced.
Id. at 4:45–64. We also note that Miyasaka discloses that the formed coating
has a thickness from 300–326 Å (id. at 17:Table 1) which falls within the
disclosed thickness (Spec. ¶ 28). Thus, Miyasaka discloses forming the same
coating using the same reactant gas via thermal CVD. Because Appellant
fails to recite any specific properties for the article of claim 1, and fails to
disclose any specific properties unique to an article produced by a diffusion-
rate-limited thermal CVD, it was reasonable for the Examiner to find that
Miyasaka’s article is the same or substantially the same as the article recited
in claim 1. An examiner’s belief is reasonable where starting materials and
processing of the prior art are so similar to those disclosed by the applicant
that it appears that the claimed product would naturally result when
conducting the prior art process. See In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990); Best, at 1255. In such an instance, the burden properly shifted to
Appellant to show that the claimed article is not the same as or is patentably
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distinct from Miyasaka’s article. Where, as here, a claimed product appears
to be identical or substantially identical to a product disclosed or suggested
by the prior art, the burden is properly shifted to the applicant to show that
the claimed article is not necessarily the same as or is patentably distinct
from the prior art product. Appellant failed to carry this burden.
Accordingly, we sustain the Examiner’s anticipation rejection and
alternative obviousness rejection of claims 1–3, 12, 13, and 16–18 based on
Miyasaka.

Rejections 3–5: Obviousness over Miyasaka in view of Iliescu, Jasinski,
Dubois, and Liyanage

The Examiner rejects claims 4–7, 9–11, 14, and 15 under 35 U.S.C.
§ 103 as unpatentable over various combinations of Miyasaka in view of
Iliescu, Jasinski, or Dubois and Liyanage. Ans. 9–11.
Appellant relies on the same arguments raised above with regard to
Rejection 2. Because those arguments were not persuasive of reversible error
as discussed above, they likewise are not persuasive as to Rejections 3–5.
Accordingly, we sustain the Examiner’s obviousness rejections of dependent
claims 4–7, 9–11, 14, and 15.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Examiner’s Answer, the Examiner’s decision to reject claims 1–
20 is affirmed.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 112(a) Enablement 1–20
1–3, 12,
13, 16–18
102(a)(1)/103 Miyasaka 1–3, 12,
13, 16–18

4–7 103 Miyasaka, Iliescu 4–7
9–11 103 Miyasaka, Jasinski 9–11
14, 15 103 Miyasaka, Dubois,
Liyanage
14, 15
Overall
Outcome
1–20

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).
AFFIRMED