Ex Parte Shirahata et al

Patent Trials and Appeals Board

Jan 9, 2019

14368954 - (D) (P.T.A.B. Jan. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/368,954 06/26/2014 Takahiro Shirahata
22850 7590 01/11/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
436335US99PCT 1432
EXAMINER
WIECZOREK, MICHAEL P
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
01/11/2019 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte TAKAHIRO SHIRAHATA, HIROYUKI ORITA,
and TAKAHIRO HIRAMATSU
Appeal 2018-003 603
Application 14/368,954
Technology Center 1700
Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a Non-Final rejection of
claims 1 and 3-5. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2018-003603
Application 14/368,954
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A method for producing a metal oxide film, the
method comprising:
(A) spraying a mist of a solution comprising zinc onto a
substrate at atmospheric pressure to form a zinc oxide film as a
metal oxide film on the substrate; and
(B) irradiating the metal oxide film with ultraviolet rays,
wherein the irradiating comprises
(B-1) determining, in accordance with a film
thickness of the metal oxide film, a wavelength of the
ultraviolet rays, and
(B-2) irradiating the metal oxide film with the
ultraviolet rays including the wavelength,
wherein the wavelength determined in (B-1) increases as
the film thickness of the metal oxide film increases.
Appellants 1 request review of the Examiner's rejection of claims 1
and 3-5 rejected under pre-AIA 35 U.S.C. § I03(a) as unpatentable over
Ohtsu et al. (US 6,783,811 B2, issued August 31, 2004) (hereinafter
"Ohtsu"), Shirahata et al. (US 2011/0143053 Al, published June 16, 2011)
(hereinafter "Shirahata"), and Bandyopadhyay et al. (US 7,611,757 Bl,
issued November 3, 2009) (hereinafter "Bandyopadhyay"), as presented in
the Examiner's Non-Final Office Action of May 10, 2017 2. App. Br. 7;
Non-Final Act. 4.
1 Toshiba Mitsubishi-Electric Industrial Systems Corporation is identified as
the real party in interest. App. Br. 2.
2 We refer to the Non-Final Action of May 10, 2017 throughout the opinion
as "Non-Final Action" or "Non-Final Act."
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Application 14/368,954
Appellants present separate arguments for claims 1, 3, and 4. App.
Br. 4. However, Appellants do not present arguments for claim 5, which
depends from claim 1. See generally Appeal Br. Accordingly, we select
independent claim 1 as representative of the subject matter before us on
appeal. Claims 1 and 5 stand or fall together based on the arguments made
by Appellants in support of patentability of claim 1. We address claims 3
and 4 separately.
OPINION
After review of the respective positions provided by Appellants and
the Examiner, we affirm the Examiner's prior art rejection of claims 1 and
3-5 for the reasons presented by the Examiner. We add the following for
emphasis.
Claim 1
Claim 1 is directed to a method of producing a metal oxide film that is
treated with UV irradiation at a UV wavelength determined in accordance
with a film thickness of the metal oxide film.
We refer to the Examiner's Non-Final Action for a complete
statement of the rejection of claim 1. Non-Final Act. 4--5.
Briefly, the Examiner finds that the combined teachings of Ohtsu and
Shirahata suggest a method of producing a metal oxide film that differs from
the claimed invention in that the combined teachings do not teach the step of
determining in accordance with the film thickness the wavelength of the UV
rays to be irradiated. Id. The Examiner turns to Bandyopadhyay to teach
that it was known to improve properties of a metal oxide film through
irradiation with UV radiation by determining the requisite UV wavelength
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Application 14/368,954
based on the thickness of the film so as to penetrate the entire thickness of
the film. Non-Final Act. 5; Bandyopadhyay Abst.; col. 2, 11. 27--40, col. 3,
11. 27-33, col. 5, 11. 37--41, col. 7, 11. 24--27. The Examiner determined that it
would have been obvious to one of ordinary skill in the art to modify the
method from the combined teachings of Ohtsu and Shirahata by
incorporating a step of determining a wavelength for the UV rays based on
the thickness of the formed metal oxide film to determine a UV wavelength
that can sufficiently penetrate the entire thickness of the film. Non-Final
Act. 5.
Appellants contend that claim 1 requires the UV wavelength
determined in (B-1) to be increased as the thickness of the metal oxide film
increases. App. Br. 7. According to Appellants, absent some recognition
that a relationship exists between the film thickness of the zinc oxide film
and the wavelength of UV necessary to maximize the efficiency in the
reduction of resistance, no motivation would have existed to emulate the
method of Claim 1. Id. Appellants also argue that nothing in
Bandyopadhyay would have motivated a person of ordinary skill in the
relevant art to set the wavelength of the UV rays in Ohtsu such that the
wavelength increases as the film thickness of the metal oxide film increases
because Bandyopadhyay and Ohtsu are directed to different objectives.
Id. at 8.
Appellants' arguments do not persuade us of Examiner error.
Appellants' arguments do not address the rejection the Examiner presents.
As the Examiner explains, Bandyopadhyay teaches that it was known to
determine the UV wavelength needed to modify properties of a metal oxide
layer based on the thickness of the metal oxide layer. Non-Final Act. 5. In
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Application 14/368,954
fact, Bandyopadhyay's disclosure that "the thickness of the precursor layer
may be driven in part by the ability of the UV radiation to penetrate the
film" (Bandyopadhyay, col. 5, 11. 37-39) would have reasonably suggested
to one of ordinary skill to determine the UV wavelength in accordance with
a film thickness of the metal oxide film and that the wavelength should be
increased as the film thickness of the metal oxide film increases to ensure
adequate penetration. Thus, there is a reasonable basis for a person of
ordinary skill in the art desiring to modify the properties of a metal oxide
layer using UV irradiation to select the appropriate UV wavelength in
accordance with the thickness of the metal oxide layer and to have
reasonably expected that such determination would lead to the desired
property modification. In re O'Farrell, 853 F.2d 894,904 (Fed. Cir. 1988)
("For obviousness under§ 103, all that is required is a reasonable
expectation of success.").
Moreover, the argued limitation defines the relationship of the UV
wavelength in terms of the thickness of the metal oxide film. However, as
the Examiner notes, the subject matter of claim 1 does not recite a positive
step of increasing the thickness of the metal oxide, which would lead to an
increase in the requisite UV wavelength for the desired treatment. Ans. 3--4.
Thus, Appellants have not adequately explained how this limitation
distinguishes the claimed invention from the method of the combined
teachings of Ohtsu, Shirahata, and Bandyopadhyay.
Appellants' argument that Ohtsu and Bandyopadhyay are directed to
different objectives (reduce resistance (Ohtsu, col. 2, 11. 49-54) versus
improve mechanical properties (Bandyopadhyay, col. 2, 11. 7-10)) is also
unavailing because Ohtsu and Shirahata already teach that the use of UV
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radiation can modify the resistance of a metal oxide film (Ohtsu, col. 2, 11.
49-54; Shirahata ,r 67). The Examiner only relied on Bandyopadhyay for its
teaching that the effective UV wavelength for a desired treatment of a metal
oxide layer depends on the thickness of the metal oxide layer. Appellants
have not adequately explained why one skilled in the art, using no more than
ordinary creativity, would not have been capable of selecting the appropriate
UV wavelength for the desired treatment of the metal oxide layer in the
process of the combined teachings of Ohtsu and Shirahata by using
Bandyopadhyay's technique of determining this UV wavelength in
accordance to the thickness of the metal oxide layer to achieve a layer with
the desired properties. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,421
(2007) ("A person of ordinary skill is also a person of ordinary creativity,
not an automaton."); see also In re Sovish, 769 F.2d 738, 743 (Fed. Cir.
1985) (presuming skill on the part of one of ordinary skill in the art.).
Appellants argue that Ohtsu is different from the invention because
Ohtsu discloses using shorter wavelength of UV light below 3 65 nm, which
are of higher energy. App. Br. 7-8; Ohtsu, col. 5, 11. 25-29.
We are also unpersuaded by this argument. We first note that the
subject matter of claim 1 does not require any specific UV wavelength for
treatment of the metal oxide layer. Further, a fair reading of the portion of
Ohtsu relied upon by Appellants would suggest to one skilled in the art that
Ohtsu is identifying a preferred embodiment of the invention, one that uses a
UV wavelength below 3 65 nm. Appellants direct us to no disclosure in
Ohtsu that limits the UV wavelength to this preferred embodiment.
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Claims 3 and 4
Claims 3 and 4 require specific UV wavelength ranges to treat metal
oxide layers of specific thickness ranges.
We refer to the Examiner's Non-Final Action for a statement of the
rejection of these claims. Non-Final Act. 5-6.
Appellants' rely primarily on the arguments presented for claim 1 to
address the rejection of claims 3 and 4. App. Br. 9-10. We refer to our
discussion above addressing these arguments.
To the extent that Appellants are arguing that the cited art does not
teach the claimed UV wavelengths ranges, Bandyopadhyay discloses using a
UV wavelength range of between about 150 nm and 800 nm depending on
the thickness of the metal oxide layer. Bandyopadhyay, col. 7, 11. 24--27,
36-41. Thus, as the Examiner explains, Bandyopadhyay's disclosure
establishes that the relationship between UV wavelength and film thickness
for UV treating metal oxide films was recognized in the art. Ans. 4--5.
Appellants have not directed us to any evidence of criticality for the claimed
UV wavelength ranges.
Accordingly, we affirm the Examiner's prior art rejection of claims 1
and 3-5 for the reasons presented by the Examiner and given above.
ORDER
The Examiner's prior art rejection of claims 1 and 3-5 under
35 U.S.C. § 103(a) is affirmed.
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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.I36(a)(l).
AFFIRMED
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