Thomas F. Soules et al.

Patent Trials and Appeals Board

Jul 25, 2019

14531875 - (D) (P.T.A.B. Jul. 25, 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.
14/531,875 11/03/2014 Thomas F. Soules LLNLP083A/IL-12301B 6560
78980 7590 07/25/2019
LLNL/Zilka-Kotab
Lawrence Livermore National Laboratory
L-703, P.O. Box 808
Livermore, CA 94551
EXAMINER
ROLLAND, ALEX A
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
07/25/2019 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):
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS F. SOULES, RAYMOND J. BEACH,
SCOTT C. MITCHELL, and GARY DEBELL
____________

Appeal 2018-007872
Application 14/531,875
Technology Center 1700
____________

Before CATHERINE Q. TIMM, GEORGE C. BEST, and
BRIAN D. RANGE, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL1

1 In explaining our Decision, we cite the Specification of November 3, 2014
(Spec.), Final Office Action of August 31, 2017 (Final), Appeal Brief of
February 27, 2018 (Appeal Br.), Examiner’s Answer of June 1, 2018 (Ans.),
and Reply Brief of July 26, 2018 (Reply Br.).
Appeal 2018-007872
Application 14/531,875

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–4, 7, 8, 10, 12–18, 20–22, and 24.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The claims are directed to a method of forming a multilayer dielectric
coating of alternating oxide materials of relatively higher and lower
refractive indices with respect to one another and selected from alumina,
hafnia, and zirconia. See, e.g., claims 1, 15, and 21. The coating is intended
to be used as an optical component of an alkali laser (see, e.g., claim 1) such
as a window or reflector of an alkali laser (see, e.g., claim 21). Claim 1
requires first and second layers be formed by atomic layer deposition
(ALD). Claim 15 requires two or more alternating layers be formed by
chemical vapor deposition (CVD). Claim 21 does not limit the deposition
method, but instead requires the alternating layers comprise materials having
particular reflectance properties. We reproduce claim 15 to further illustrate:
15. A method for forming an alkali vapor resistant
multilayer dielectric coating, comprising:
forming, via chemical vapor deposition (CVD), two or
more alternating layers of oxide materials above a substrate, the
oxide materials of the alternating layers having relatively higher
and lower refractive indices with respect to one another,
wherein an innermost layer of the two or more alternating
layers is on an alkali-contacting side of the alkali resistant
coating,

2 Lawrence Livermore National Security, LLC is the applicant under 37
C.F.R. § 1.46. Lawrence Livermore National Security LLC and MLD
Technologies LLC are identified as the real parties in interest. Appeal Br. 2.
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wherein the innermost layer of the two or more
alternating layers comprises alumina; and
wherein subsequent layers of the two or more alternating
layers independently comprise at least one material selected
from a group consisting of: alumina, zirconia, and hafnia.
Appeal Br. 28 (claims appendix).
The Examiner maintains the following rejections:3
A. Claims 1, 4, 8, 12, 13, 15, 17, 18, and 224 under 35 U.S.C.
§ 103(a) as obvious over Atita5 in view of Furukawa6;
B. Claims 2, 3, 7, 14, 16, and 21 under 35 U.S.C. § 103(a) as obvious
over Atita and Furukawa and further in view of Dobrowolski7;
C. Claims 10 and 20 under 35 U.S.C. § 103(a) as obvious over Atita
and Furukawa and further in view of Kaneno8; and
D. Claim 24 under 35 U.S.C. § 103(a) as obvious over Atita in view
of Furukawa and Dobrowolski, and further in view of Kaneno.

3 The Examiner withdrew the rejections of claims 1–4, 7, 9–14, and 22–24
that had been made under 35 U.S.C. § 112 ¶ 1. Ans. 3. The rejection of
claim 11 under 35 U.S.C. § 112 ¶ 4 was rendered moot by the cancellation
of claim 11.
4 We omit canceled claims from the statement of rejection. The Examiner
did not list claim 22 in the rejection summary. Final 9. Because, however,
the Examiner provides an obviousness analysis for claim 22, we include that
claim in our statement of the rejection. As Appellant lists claim 22 as
rejected (Appeal Br. 12), the error was harmless.
5 Atita, US 5,472,795, issued Dec. 5, 1995.
6 Furukawa et al., US 2003/0092233 Al, published May 15, 2003.
7 Dobrowolski, Optical Properties of Films and Coatings, Handbook of
Optics Vol. 1, Sponsored by the Optical Society of America, 2nd ed., Ch. 42
(1995).
8 Kaneno et al., US 4,182,972, issued Jan. 8, 1980.
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OPINION
For our purposes, it will suffice to focus on the rejection of claims 1,
15, and 21. This is because the issue on appeal is the same for claims 1 and
15 and all the claims depending from claims 1 and 15, but is different for
claim 21.
Claims 1 and 15
For the rejection of claims 1 and 15, the issue is: Has Appellant
identified a reversible error in the Examiner’s finding of a reason to form the
layers of Atita by either ALD or CVD?
Appellant has identified such an error.
According to the Examiner, it would have been obvious to one of
ordinary skill in the art at the time of the invention to deposit the alumina
and zirconia layers of Atita by ALD or CVD “because Furukawa teaches
that it is suitable to do so and would predictably form the layers.” Final 10.
But the Examiner has failed to account for Atita’s specific teaching of using
a reactive sputtering technique to obtain a nanolaminate containing
polycrystalline, metastable tetragonal zirconia (t-ZrO2). Atita col. 6, ll. 8–
38. Atita teaches that “[o]ther film forming methods will not necessarily
form tetragonal zirconia.” Atita col. 5, ll. 6–7. In light of this teaching, we
agree with Appellant that Furukawa’s teaching “does not rise to the level of
providing a skilled artisan with reasonable motivation to modify the
teachings of Atita.” Appeal Br. 18. The bare teaching in Furukawa that a
high dielectric film of a metal oxide, such as titanium oxide, hafnium oxide,
alumina, zirconium oxide, and ruthenium oxide as well as other dielectric
materials having a high dielectric constant can be formed by a CVD,
sputtering, or ALD in the context of forming a gate dielectric in a
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semiconductor integrated circuit device does not suffice to provide a
suggestion to substitute CVD or ALD for Atita’s sputtering process. And
the Examiner does not provide any technical reasoning to support a finding
that those of ordinary skill in the art would have a reasonable expectation
that the necessary t-ZrO2 could be obtained using CVD or ALD.
We do not sustain the rejection of claims 1, 4, 8, 9, 11–13, 15, 17, and
18 as obvious over Atita in view of Furukawa.
The Examiner’s use of additional references to reject claims 2, 3, 7,
10, 14, 16, 20, and 24 does not cure the deficiency. Thus, we do not sustain
the rejection of: claims 2, 3, 7, 14, and 16 as obvious over Atita and
Furukawa and further in view of Dobrowolski; claims 10 and 20 as obvious
over Atita and Furukawa and further in view of Kaneno; or the rejection of
claim 24 as obvious over Atita in view of Furukawa and Dobrowolski, and
further in view of Kaneno.
Claim 21
This leaves us with claim 21. The Examiner rejected claim 21 as
obvious over Atita and Furukawa and further in view of Dobrowolski. As
we stated above, claim 21 does not limit the deposition method. For this
reason Furukawa is unnecessary to the rejection. Instead, claim 21 requires
the alternating layers comprise materials having particular reflectance
properties. Specifically, claim 21 requires the plurality of alternating layers
“comprise one or more materials of the following structures:” (1) an anti-
reflection (AR) coating or (2) a multilayer high reflection (HR) coating.9

9 Given that Appellant points to paragraph 36 of the Specification for
support for this portion of claim 21 (Appeal Br. 5), we interpret claim 21 as
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The AR coating must have a reflectance of less than about 5% at an angle of
incidence for a laser beam having a wavelength of between about 650 nm
and about 900 nm. The HR coating must have a reflectance of greater than
about 98% at a pump wavelength of about 780 nm having an angle of
incidence of between about 50° and about 90°.
Claim 21 reads:
21. A method of forming an alkali laser multilayer
dielectric coating, the method comprising:
forming, on a substrate, a window or a reflector of an
alkali laser, the window or reflector comprising a plurality of
alternating layers of relatively higher and lower index dielectric
materials, the alternating layers comprising dielectric materials
selected from a group consisting of alumina, zirconia and
hafnia;
wherein the plurality of alternating layers comprise one
or more materials of the following structures:
one or more layers that form an anti-reflection
(AR) coating that provides a reflectance of less than
about 5% at an angle of incidence for a laser beam
having a wavelength of between about 650 nm and about
900 nm; and
a plurality of alternating layers that form a high
reflection (HR) coating, wherein the HR coating provides
a reflectance of greater than about 98% at a pump
wavelength of about 780 nm having an angle of
incidence of between about 50° and about 90°; and
wherein an innermost of the alternating layers is
configured to be in direct contact with an alkali vapor on

reciting the AR coating and HR coatings as alternatives. In other words,
only one is required to be present.
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an alkali-contacting side of the multilayer dielectric
coating.
Appeal Br. 29–30.
The issue here is: Has Appellant identified a reversible error in the
Examiner’s determination that tailoring the reflectance and refractive index
of Atita’s layers for the particular optical application, such as antireflection
or filtering, would have been within the ordinary skill in the art?
Appellant has not identified such an error.
Atita teaches sputter depositing transparent ceramic nanolaminates.
Atita col. 1, ll. 11–13. The nanolaminate has layers of polycrystalline,
metastable tetragonal zirconia (t-ZrO2) and a hard ceramic layer, such as
alumina. Atita col. 2, ll. 18–26. The transparent ceramic nanolaminates “are
particularly well adapted for use as coatings on mirrors and windows of all
kinds.” Atita col. 7, ll. 26–32. Atita suggests using the nanolaminates as
coatings on X-ray mirrors, electrochromic automotive mirrors, cellular
telephone and wristwatch windows, encapsulation materials for
microelectronics, and lenses and other optics. Id. Atita further discloses
including a conductive indium-tin-oxide layer and using the product as a
heated window or the window of a touch screen or other display device.
Atita col. 3, ll. 16–18.
Given that Atita desires to use the nanolaminate as a transparent
coating on various types of mirrors, windows, display screens, and other
optical devices, one would need to tailor the reflectance and refractive
optical properties for those uses. Dobrowolski evinces the design
approaches that were routinely used to obtain the particular transmittance,
reflectance, and absorptance values desired. Dobrowolski § 42.3 at p. 42.9
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(“A thin-film designer may be asked to design a multilayer coating in which
the transmittance, reflectance, and/or absorptance values are specified at a
number of wavelengths, angles, and polarizations of the incident light.”).
According to Dobrowolski, “[t]he parameters that can be used to reach these
goals are the number of layers in the multilayer, the layer thicknesses, and
the refractive indices and extinction coefficients of the individual layers and
of the surrounding media.” Id. Dobrowolski further refers to books
discussing the methods developed for design of multilayer coatings and
summarizes the most important methods. Dobrowolski §§ 42.3–42.17.
Appellant contends that “a skilled artisan would not reasonably expect
to be able to fabricate the specific subject matter claimed based on such
general principles without additional guidance regarding the necessary
thicknesses, number of layers, extinction coefficients, and refractive indices
necessary to accomplish the particular claimed features.” Appeal Br. 24.
But Appellant provides no convincing evidence that more than routine
experimentation for the zirconia and alumina materials of Atita would be
required by the ordinary artisan. Appellant points to Dobrowolski’s
statement that graphical vector analysis does not work for highly reflective
materials as evidence in support (Appeal Br. 24–25), but this evidence is not
particularly convincing given that claim 21 does not require highly reflective
material when the coating is an AR coating, other methods are available
(Dobrowolski § 42.3), the argument does not consider routine direct
experimentation, and Appellant does not present evidence that Atita’s
zirconia and alumina nanolaminates have high final reflectance.
Dobrowolski provides evidence that those of ordinary skill in the art
understood reflection and refraction properties of multilayer films of the
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type taught by Atita are affected by the number of layers in the multilayer,
the layer thicknesses, and the refractive indices and extinction coefficients of
the individual layers and of the surrounding media. That is enough to
establish that reflectance was a result-effective variable that is optimizable
such that a prima facie case of obviousness is established that shifts the
burden to Appellant to show, for instance, that Appellant achieves
unexpected results. E.I. DuPont de Nemours & Co. v. Synvina C.V., 904
F.3d 996, 1009–10 (Fed. Cir. 2018). Appellant does not provide any
evidence that the results obtained were unexpected.
We sustain the rejection of claim 21 as obvious over Atita, Furukawa,
and Dobrowolski.
CONCLUSION
In summary:
Claims
Rejected
Basis Reference(s) Affirmed Reversed
1, 4, 8, 12,
13, 15, 17,
18, 22
§ 103(a) Atita, Furukawa 1, 4, 8, 12,
13, 15, 17,
18, 22
2, 3, 7, 14,
16, 21
§ 103(a) Atita, Furukawa,
Dobrowolski
21 2, 3, 7, 14,
16
10, 20 § 103(a) Atita, Furukawa,
Kaneno
10, 20
24 § 103(a) Atita, Furukawa,
Dobrowolski,
Kaneno
24
Outcome 21 1–4, 7, 8,
10, 12–18,
20, 22, 24

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DECISION
The Examiner’s decision is affirmed-in-part.

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)(1).

AFFIRMED-IN-PART