Ex Parte Takahashi et al

Patent Trial and Appeal BoardSep 18, 2012

10525443 (P.T.A.B. Sep. 18, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/525,443 02/24/2005 Tadashi Takahashi 5576-177 3864 20792 7590 09/18/2012 MYERS BIGEL SIBLEY & SAJOVEC PO BOX 37428 RALEIGH, NC 27627 EXAMINER BURKHART, ELIZABETH A ART UNIT PAPER NUMBER 1715 MAIL DATE DELIVERY MODE 09/18/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TADASHI TAKAHASHI, NAOYUKI TAKAHASHI, and TAKATO NAKAMURA __________ Appeal 2011-002903 Application 10/525,443 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, CHUNG K. PAK, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002903 Application 10/525,443 2 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1, 8, 10, 11, 13, and 15. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. Appellants’ invention is directed to a method of preparing a metal sulfide film at atmospheric pressure to provide a low cost, convenient process of producing metal sulfide films (Spec. 1:7-8; 3:16-23). Appellants explain that prior art methods of forming metal sulfide films deposit the films in a vacuum, which requires a complicated apparatus and adds to the cost of the process (id. at 1-3). Claim 1 is illustrative: 1. A method for preparing a metal sulfide film, comprising the steps of providing metal halide as a first raw material and a thioamide compound as a second raw material, vaporizing the metal halide and the thioamide compound, and reacting the metal halide with the thioamide compound at atmospheric pressure in a film forming section heated to from 375 to 425°C to form the metal sulfide film on a substrate. Appellants appeal the following rejection: Claims 1, 8, 10, 11, 13, and 15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Takahashi (Naoyuki Takahashi et al., Preparation of Pyrite Thin Films by Atmospheric Pressure Chemical Vapor Deposition Using FeCl3 and CH3CSNH2, 10 J. MATERIALS CHEMISTRY 2346 (2000)) in view of Sasaki (Y. Sasaki et al., Iron Pyrite Thin Film Prepared by Double Source Vacuum Vapor Deposition, 18 J. MATERIALS SCI. 1193 (1999)). Appeal 2011-002903 Application 10/525,443 3 ISSUE Did the Examiner reversibly err in concluding that it would have been obvious to modify Takahashi’s atmospheric pressure deposition process to use Sasaki’s temperature range and Fe/S ratio disclosed with a vacuum deposition process? We decide this issue in the affirmative. FINDINGS OF FACT AND ANALYSES The Examiner finds that Takahashi teaches an atmospheric deposition process to form iron pyrite on a substrate, but fails to specifically teach the claimed temperature range of 375 to 425°C for the film forming section (Ans. 3). The Examiner finds that Takahashi teaches a growth temperature range for the film from 723-823 K (450-550°C). Id. The Examiner finds that Sasaki teaches that high partial pressure of sulfur and high temperature can be critical factors to preparing pure pyrite and that once these conditions were known, pure pyrite can be prepared by other methods (id. at 4). The Examiner finds that Sasaki teaches that a pure pyrite film may be formed at temperatures higher than 300°C and a Fe/S flux ratio greater than 6.8 (id.). The Examiner concludes that it would have been obvious to adjust the Fe/S flux ratio in Takahashi’s process as suggested by Sasaki in order to form a pure pyrite film at lower temperatures, such as within the claimed range, because Takahashi is concerned with forming single phase pyrite and Sasaki’s teachings regarding growth temperature and partial pressure may be extrapolated to other known methods of depositing pyrite as taught by Sasaki (id.). Appellants argue that there is no disclosure or suggestion in Sasaki that the Fe/S flux or temperature range which may be appropriate for Appeal 2011-002903 Application 10/525,443 4 preparing a pure pyrite film by double source vacuum vapor deposition or other in vacuo methods, are broadly applicable to any and all methods of vapor deposition to prepare a pure pyrite film (App. Br. 6). Appellants contend that the Examiner’s rejection does not provide the requisite reason, suggestion or incentive to combine the cited prior art, with a predictable and reasonable expectation of success, to arrive at the recitations of the pending claims (Reply Br. 3). The preponderance of the evidence favors Appellants’ arguments of nonobviousness. The Examiner’s rejection is premised on Sasaki’s following teaching: High partial pressure of sulfur and high temperature can be a critical factor to prepare the pure pyrite. In other words, once these conditions were satisfied, pure pyrite phase can be prepared by other methods. (Sasaki 1193). The Examiner finds that “other methods” would have included atmospheric pressure chemical vapor deposition (CVD) processes such as that taught by Takahashi, such that there is reasonable expectation of successfully modifying Takahashi’s atmospheric pressure process to use Sasaki’s Fe/S flux ratio and temperature range to arrive at the claimed invention (Ans. 5). However, the Examiner has not satisfied the burden of establishing that Sasaki’s disclosure of a suitable “high temperature” and Fe/S flux ratio for vacuum deposition processes would have been reasonably applicable to other non-vacuum methods. Sasaki describes on page 1193 that various deposition processes are known but does not indicate that any of the deposition processes are performed at atmospheric pressure. Indeed, Sasaki uses a “double-source evaporation method” which applies the film in Appeal 2011-002903 Application 10/525,443 5 a vacuum (Sasaki 1193). Accordingly, we understand Sasaki’s “other methods” disclosure to refer to other vacuum processes. Therefore, it is unclear to us and the Examiner has not adequately explained why teachings regarding suitable temperatures or flux ratios for vacuum processes would have been reasonably expected to be successfully used without modification in non-vacuum (i.e., atmospheric) processes to produce iron pyrite films. The Examiner finds that there is a reasonable expectation of success because Sasaki does not teach that pressure (other than partial pressure of sulfur) is a critical factor (Ans. 5). However, as Appellants argue, it would appear that pressure affects temperature (Reply Br. 4). Indeed, Takahashi’s atmospheric pressure process discloses that the temperature for film forming is between 723-773 K (450-500°C), which is outside Appellants’ claimed range and higher than the temperature used in Sasaki’s vacuum process. On this record, the Examiner has not established that it would have been obvious to modify Takahashi’s atmospheric pressure process to use Sasaki’s parameters (e.g., film-forming temperatures) for a vacuum deposition process. We reverse the Examiner’s § 103 rejection. DECISION The Examiner’s decision is reversed. ORDER REVERSED bar