II-VI Incorporated

Patent Trials and Appeals Board

Feb 5, 2020

14966085 - (D) (P.T.A.B. Feb. 5, 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.
14/966,085 12/11/2015 David Sabens 4581-1510573 9879
146763 7590 02/05/2020
The Webb Law Firm / II-VI
One Gateway Center
420 Ft. Duquesne Blvd., Suite 1200
Pittsburgh, PA 15222
EXAMINER
TUROCY, DAVID P
ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
02/05/2020 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):
patents@webblaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID SABENS, CHAO LIU, WEN-QING XU, and
CHARLES D. TANNER
____________

Appeal 2019-003228
Application 14/966,085
Technology Center 1700
____________

BEFORE JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 16–20.3 We have jurisdiction under 35 U.S.C.
§ 6(b).

1 In this Decision, we refer to the Specification filed Dec. 11, 2015
(“Spec.”); Non-Final Office Action dated Feb. 22, 2018 (“Non-Final Act.”);
Appeal Brief filed Aug. 22, 2018 (“Appeal Br.”); Examiner’s Answer dated
Jan. 14, 2019 (“Ans.”); and Reply Brief filed Mar. 14, 2019 (“Reply Brief”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies II-VI Incorporated as the real party
in interest. Appeal Br. 2.
3 Claims 1–15 are withdrawn. Non-Final Act. 1.
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We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to a method for microwave plasma
chemical vapor deposition growth of diamond films. Spec. ¶¶ 3, 42;
Abstract. Claim 16, the sole independent claim, illustrates the claimed
subject matter on appeal and is reproduced below from the Claims Appendix
to the Appeal Brief:
16. A method of growing a diamond film comprising:
(a) providing a microwave plasma reactor comprising:
a resonance chamber made of an electrically
conductive material;
a microwave generator coupled to feed microwaves
into the resonance chamber;
a plasma chamber comprising part of the resonance
chamber interior space and separated from a remainder of the
resonance chamber by a gas-impermeable dielectric window;
a gas control system for supplying a process gas and a
cooling gas into the plasma chamber, removing gaseous
byproducts from the plasma chamber, and for maintaining the
plasma chamber at a lower gas pressure than the remainder of the
resonant chamber;
an electrically conductive and cooled substrate holder
disposed at the bottom of the plasma chamber; and
an electrically conductive substrate for growing diamond
film on a top surface of the substrate that faces away from the
substrate holder, wherein the substrate is disposed in the plasma
chamber parallel to the substrate holder, the substrate is spaced
from the substrate holder by a gap having a height d, the
substrate is electrically insulated from the substrate holder by
electrically insulating spacers placed without adhesive between
the substrate and the substrate holder, the gas control system is
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adapted to supply the process gas into the plasma chamber
between the dielectric window and the substrate, and the gas
control system is adapted to supply the cooling gas into the gap;
(b) providing the cooling gas into the gap between the
substrate and the substrate holder;
(c) providing the process gas into the plasma chamber;
(d) supplying to the resonant chamber microwaves of
sufficient energy to cause the process gas to form in the plasma
chamber a plasma that heats a top surface of the substrate to an
average temperature between 750°C and 1200°C; and
(e) in the presence of the plasma in the plasma chamber,
actively controlling a temperature distribution across the top
surface of the substrate and/or across a growth surface of the
diamond film growing on the top surface of the substrate in
response to the plasma such that the temperature distribution has
less than a predetermined temperature difference between a
highest temperature of the temperature distribution and a lowest
temperature of the temperature distribution.
Appeal Br. 10–11 (key disputed claim language italicized and bolded).
REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
Kosky et al. (“Kosky”) US 5,397,396 Mar. 14, 1995
Slutz US 5,491,002 Feb. 13, 1996
Williams et al. (“Williams”) US 2010/0015438 A1 Jan. 21, 2010
Won et al. (“Won”) US 2012/0171391 A1 July 5, 2012
Mollart WO 2013/087706 A1 June 20, 2013
F. Silva et al., Microwave Engineering of Plasma-Assisted CVD Reactors
for Diamond Deposition, 21 J. Phys.: Condens. Matter 1–16 (2009)
(“Silva”).
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REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 16 and 18–20 are rejected under 35 U.S.C. § 103 as
being unpatentable over Mollart in view of Silva, Won, and Slutz
(“Rejection 1”). Ans. 3.
2. Claim 17 is rejected under 35 U.S.C. § 103 as being
unpatentable over Mollart in view of Silva, Won, and Slutz as applied to
claim 16 above, and further in view of Kosky and Williams (“Rejection 2”).
Id. at 12.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner’s
rejections based on the fact-finding and reasoning set forth in the Answer
and Non-Final Office Action, which we adopt as our own. We add the
following primarily for emphasis.
Rejection 1
The Examiner rejects claims 16 and 18–20 under § 103 as obvious
over the combination of Mollart, Silva, Won, and Slutz (Ans. 3–12), which
we refer to as Rejection 1.
In response to the Examiner’s rejection, Appellant presents argument
for the patentability of independent claim 16 only and does not present
separate argument for the patentability of dependent claims 18–20. Appeal
Br. 4. We select claim 16 as representative and claims 18–20 stand or fall
with claim 16. 37 C.F.R. § 41.37(c)(1)(iv).
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The Examiner determines the combination of Mollart, Silva, Won,
and Slutz suggests a method of growing a diamond film in a plasma reactor
satisfying all of the limitations of claim 16 and concludes the combination
would have rendered the claim obvious. Ans. 3–10.
Regarding the recitation “the substrate is electrically insulated from
the substrate holder by electrically insulating spacers” of claim 16, the
Examiner relies principally on Won for teaching or suggesting that element
of the claim. Id. at 8–9. In particular, the Examiner finds Won teaches a
microwave chemical vapor deposition (CVD) chamber where the substrate is
spaced from the substrate holder or susceptor using spacers and that the
spacers may be fabricated from any metal, ceramic, or high temperature
material. Id. at 8 (citing Won, Abstract, ¶¶ 24, 25, Fig. 1).
Based on the Examiner’s findings regarding the teachings of the prior
art, the Examiner concludes
it would have been obvious to a person having ordinary
skill in the art before the effective filing date of the
claimed invention to have modified the teachings of
Mollart in view of Silva to have formed the spacers from
a ceramic material because Won indicates that ceramics
are acceptable materials for forming spacers in a
microwave CVD system such that it will yield the desired
and predictable result of successfully separating the
substrate from the substrate holder during deposition.
Id. at 8–9. The Examiner finds and explains that, because it is known in the
art that ceramics are not electrically conductive, as evidenced at paragraph
15 of Appellant’s Specification, the spacers formed of ceramics in the
method of Mollart in view of Silva and Won would be electrically insulating
and the substrate would be electrically insulated from the substrate holder in
the manner claimed. Id. at 9 (citing Spec. ¶ 15).
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Appellant argues the Examiner’s rejection of claim 16 should be
reversed because the cited art does not teach or suggest the “electrically
insulating spacers” recitation of the claim. Appeal Br. 4–8; Reply Br. 1–8.
In particular, Appellant contends that, in contrast to the claimed invention,
“Mollart implicitly teaches its spacer wires or spacer pads are electrically
conductive –– not electrically insulating.” Appeal Br. 6.
Appellant further contends that, as evidenced by the Inglis4 reference,
which teaches the use of electrically conductive spacers to ensure good
electrical contact between the spacer elements and the substrate holder, and
to avoid the problems of arcing under the substrate during CVD growth, one
of ordinary skill in the art would not have used electrically insulating
ceramic spacers in place of Mollart’s spacer wires or spacer pads. Id. at 6–7;
see also Reply Br. 3 (same).
In other words, Appellant argues one of ordinary skill would not have
modified Mollart’s method and system to include Won’s electrically
insulating ceramic spacers because “one skilled in the art would expect the
arcing problems noted in Inglis to occur during diamond film growth ––
which arcing is undesirable.” Appeal Br. 7.
Appellant also argues one of ordinary skill in the art would not have
combined the teachings of Mollart and Won to arrive at the claimed
invention because the references involve “two completely different
materials” and “very different process conditions.” Id. at 7. Appellant
contends that Mollart is about growing a diamond film, while Won is about

4 Inglis, WO 2013/087702 A2, published June 20, 2013. A copy of the
Inglis reference is attached as Exhibit A of the Evidence Appendix to the
Appeal Brief.
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depositing a silicon-containing dielectric layer. Id. at 7. Appellant further
contends that, in contrast to the growth pressure used in Won’s CVD
process, which is about 50 mTorr to about 250 mTorr, the growth pressure
used in Mollart’s CVD process is at least 80 Torr, which differs by orders of
magnitude. Id. at 7; see also Reply Br. 4–5 (citing the Sabens Declaration5).
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection. Rather, based on the fact-finding and reasoning
provided by the Examiner at pages 3–10 and 16–22 of the Answer and pages
3–11 of the Non-Final Action, we find a preponderance of the evidence and
sound technical reasoning support the Examiner’s obviousness analysis and
determination that the cited art suggests “electrically insulating spacers,” as
recited in claim 16.
As the Examiner finds (Ans. 3–5), Mollart teaches a CVD method of
growing a diamond film in a microwave plasma reactor on the top surface of
a substrate in a chamber whereby the substrate is spaced from the substrate
holder 34 by spacers 36. Mollart 5, 14, 15, 17, 19, Figs. 3, 5.
As the Examiner further finds (Ans. 8), Won teaches a thin film
deposition process using microwave plasma having a CVD chamber where
the substrate 102 is spaced from the substrate holder/susceptor 110 using
spacers 190, and that the spacers 190 may be fabricated from ceramic, which
is an electrically insulating material. Won, Abstract, ¶ 24 (disclosing the
“spacers 190 may be fabricated from any metal, ceramics, high temp
material”), ¶ 25, Fig. 1; see also Spec. ¶ 15 (disclosing that “ceramic is

5 Rule 132 Declaration of David Sabens dated Nov. 20, 2017 (“Sabens
Declaration”).
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chosen as the material for the insulating spacers because ceramic is an
electrical insulator”).
The Examiner also provides a reasonable basis, which is supported by
a preponderance of the evidence in the record, to evince why one of ordinary
skill would have combined the teachings of the cited art to arrive at the
claimed invention. Ans. 8–9 (explaining it would have been obvious to one
of ordinary skill to have modified Mollart’s method and microwave plasma
system to include ceramic spacers as taught by Won because Won explicitly
teaches that ceramics are acceptable materials for fabricating spacers in a
microwave plasma CVD system). Indeed, it is well-settled that the mere
substitution of one known material for another known in the art is likely to
be obvious when it does no more than yield predictable results. KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”).
Absent more, the fact that Mollart is silent as to the material used to
form its spacers does not implicitly teach that electrically conductive spacers
must be used or teach away from the use of electrically insulating spacers, as
Appellant’s argument seems to suggest. Allergan, Inc. v. Apotex Inc., 754
F.3d 952, 964 (Fed. Cir. 2014) (explaining that “silence does not imply
teaching away”).
Based on the Examiner’s fact-finding and reasoning provided at pages
17–19 of the Answer, Appellant’s arguments regarding the Inglis reference
is equally unpersuasive. In particular, as the Examiner finds (Ans. 18) and
contrary to what Appellant’s argument implies, the Inglis reference does not
teach or suggest that the use of electrically conductive spacers is required.
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Rather, as the Examiner finds and correctly points out (Ans. 17), the portion
of Inglis relied upon by Appellant actually teaches that the “spacer elements
may be electrically conductive and/or may be fixed in place with an
electrically conductive adhesive” (Inglis 29) (emphasis added), which we
find would have reasonably suggested to one of ordinary skill in the art that
the use of electrically conductive spacers is optional and not necessarily
required. That is, electrically conductive spacers may or may not be used in
microwave plasma CVD systems. See In re Burckel, 592 F.2d 1175, 1179
(CCPA 1979) (“[A] reference must be considered not only for what it
expressly teaches, but also for what it fairly suggests.”); see also In re
Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of
a reference, it is proper to take into account not only specific teachings of the
reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.”).
Moreover, the fact that the Inglis reference, which was not cited or
relied upon by the Examiner in the rejection, discusses or suggests that
electrically conductive spacers may be used or may be preferable for its
CVD process, without more, does not negate or take away from the
reference’s broader disclosure or from Won’s explicit disclosure regarding
ceramic spacers being known in the art and suitable for use in a microwave
plasma CVD process. In re Susi, 440 F.2d 442, 445-46 (CCPA 1971)
(disclosure of particularly preferred embodiments does not teach away from
broader disclosure or non-preferred embodiments); see also In re Keller, 642
F.2d 413, 425 (CCPA 1981) (explaining in making an obviousness
determination, the combined teachings of the prior art must be considered as
a whole).
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We do not find Appellant’s argument that one of ordinary skill would
not have combined Mollart and Won because they involve “two completely
different materials” and “very different process conditions” (Appeal Br. 7)
persuasive based on the Examiner’s findings and reasoning provided at
pages 19–22 of the Answer. As the Examiner explains (Ans. 19),
Appellant’s argument is misplaced because it mischaracterizes and is not
based on the Examiner’s rejection. Contrary to what Appellant’s argument
suggests, the Examiner’s rejection does not propose modifying Mollart’s
process to deposit the silicon-based materials described in Won on Mollart’s
substrate at the process conditions described in Won. Rather, as previously
discussed above, the Examiner’s rejection is based on the Examiner’s
conclusion that it would have been obvious to one of ordinary skill to have
modified Mollart’s method and microwave plasma system to include
ceramic spacers because Won explicitly teaches that ceramic spacers were
known and suitable in the art for use in microwave plasma CVD.
Won ¶¶ 23, 24.
The fact that Won may describe, in certain embodiments, depositing
materials on a substrate at process conditions, which may differ from and are
not specifically discussed in Mollart, without more, does not negate or teach
away from Won’s disclosure regarding the known use and suitability of
ceramic spacers for microwave plasma CVD. Moreover, as the Examiner
finds (Ans. 19), Won teaches that its process and plasma chamber (process
chamber 100), nonetheless, can be used and “may be configured to deposit a
variety of materials on the substrates 102.” Won ¶ 23.
Because Appellant’s argument regarding the Sabens Declaration is
presented for the first time on appeal in the Reply Brief (Reply Br. 4–7) and
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is not accompanied by a showing of good cause, we need not consider it. 37
C.F.R. §§ 41.37(c)(1)(iv), 41.41(b)(2).
Even if we were to consider Appellant’s reply argument regarding the
Sabens Declaration, it is not persuasive. In particular, Appellant’s
contentions at pages 4–7 of the Reply Brief regarding the Sabens
Declaration are entitled to little weight because they are largely conclusory
and unsupported by persuasive evidence in the record. In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984). The portions of the Sabens Declaration
upon which Appellant relies (see Sabens Decl. 2–5) lack adequate factual
support and neither Appellant nor Dr. Sabens identify or direct us to
persuasive evidence to support the opinion testimony. See, e.g., Ashland
Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir.
1985) (“Lack of factual support for expert opinion going to factual
determinations ... may render the testimony of little probative value in a
validity determination.”); In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and
conclude that the lack of factual corroboration warrants discounting the
opinions expressed in the declarations.”) (citations omitted).
Accordingly, we affirm the Examiner’s rejection of claims 16 and
18–20 under 35 U.S.C. § 103 as obvious over the combination of Mollart,
Silva, Won, and Slutz.
Rejection 2
In response to the Examiner’s rejection of claim 17 as obvious over
the combination of Mollart, Silva, Won, Slutz, Kosky, and Williams (Ans.
12–16), which we refer to as Rejection 2, Appellant does not present any
new or additional substantive arguments.
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Thus, based on the fact-finding and reasoning provided by the
Examiner at pages 12–16 of the Answer, and for principally the same
reasons discussed above for affirming the Examiner’s rejection of claim 16,
we affirm the Examiner’s rejection of claim 17 under 35 U.S.C. § 103 as
obvious over the combination of Mollart, Silva, Won, Slutz, Kosky, and
Williams.
CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
16, 18–20 103 Mollart, Silva, Won,
Slutz
16, 18–20
17 103 Mollart, Silva, Won,
Slutz, Kosky, Williams
17
Overall
Outcome
16–20

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)(iv).
AFFIRMED