Makoto Saito et al.

Patent Trials and Appeals BoardAug 20, 2019

12474134 - (D) (P.T.A.B. Aug. 20, 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. 12/474,134 05/28/2009 Makoto Saito 30794.263-US-U1 1926 22462 7590 08/20/2019 GATES & COOPER LLP (General) HOWARD HUGHES CENTER 6060 CENTER DRIVE SUITE 830 LOS ANGELES, CA 90045 EXAMINER BRATLAND JR, KENNETH A ART UNIT PAPER NUMBER 1714 NOTIFICATION DATE DELIVERY MODE 08/20/2019 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): docketing-us@gates-cooper.com gates-cooper@blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MAKOTO SAITO, STEVEN P. DENBAARS, JAMES S. SPECK, and SHUJI NAKAMURA ____________________ Appeal 2018-004610 Application 12/474,134 Technology Center 1700 ____________________ Before KAREN M. HASTINGS, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 12, 14, 19–22, 30, and 31 of Application 12/474,134 under 35 U.S.C. § 103(a) as obvious. Final Act. (July 20, 2017). Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we affirm. 1 The Regents of the University of California are identified as the real party in interest. Appeal Br. 1. Appeal 2018-004610 Application 12/474,134 2 BACKGROUND The ’134 Application describes methods for high-speed solvo-thermal growth of high quality hexagonal würtzite-type single crystals of Group III- nitride materials. Spec. 4. Claim 12 is representative of the ’134 Application’s claims and is reproduced from the Claims Appendix of the Appeal Brief with the disputed limitation italicized. 12. A method of growing a III-nitride single bulk crystal with a hexagonal würtzite structure, comprising: performing solvo-thermal crystal growth on a III-nitride seed crystal having a growth surface comprising a semipolar plane to create the III-nitride single bulk crystal, wherein the III-nitride seed crystal is grown in a [0001] direction and sliced into a shape having a desired orientation, and the solvo-thermal crystal growth on the growth surface of the III-nitride seed crystal comprising the semi polar plane results in a smoother surface for the III-nitride single bulk crystal as compared to solvo-thermal crystal growth on a III- nitride seed crystal having a growth surface comprising a polar plane. Appeal Br. 11 (emphasis and some paragraphing added). Appeal 2018-004610 Application 12/474,134 3 REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 12, 14, 19–21, 30, and 31 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Callahan,2 Baker,3 and Funato.4 Final Act. 2. 2. Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Callahan, Baker, Funato, and Dwilinski.5 Final Act. 8. DISCUSSION Rejection 1. Appellants only present specific arguments for reversal of this rejection with respect to claim 12. Appeal Br. 4–8. Appellants stipulate that claims 14, 19–21, 30, and 31 will stand or fall with claim 12. Id. at 8–9. Accordingly, we limit our discussion to claim 12. The Examiner rejected claim 12 as obvious over the combination of Callahan, Baker, and Funato. Final Act. 2–5. The Examiner found that Callahan describes solvo-thermal growth of a Group III-nitride crystal on a 2 Michael J. Callahan et al., Growth of GaN crystals under ammonothermal conditions, 798 Mat. Res. Soc. Symp. Proc. Y2.10.1–Y2.10.6 (2004). 3 Troy J. Baker et al., Characterization of Planar Semipolar Gallium Nitride Films on Sapphire Substrates, 45 Jap. J. Appl. Phys. 1154–57 (February 3, 2006). 4 Mitsuru Funato et al., Blue, Green, and Amber InGaN/GaN Light-Emitting Diodes on Semipolar {11-22} GaN Bulk Substrates, 45 Jap. J. Appl. Phys. L659–L662 (June 30, 2006). 5 WO 2006/057463 A1, published June 1, 2006. The Examiner cited the US national phase filing which issued on March 15, 2011 as US 7,905,957 B2. Final Act. 2. Appeal 2018-004610 Application 12/474,134 4 III-nitride seed crystal to create a III-nitride single bulk crystal. Id. at 2. The Examiner also found that Callahan does not expressly describe this crystal growth as occurring on a semipolar plane of the seed crystal. Id. at 3. The Examiner further found that Callahan describes solvo-thermal techniques as a lower cost alternative to HVPE growth methods. Id. The Examiner found that Baker describes growth of planar semipolar III-nitride films on a sapphire substrate. Id. Based on these findings, the Examiner concluded that a person of ordinary skill in the art would be inclined to utilize the ammonothermal growth method of Callahan to grow lower- cost and high-quality semipolar Group III-nitride compound semiconductors on a seed crystal comprised of a semipolar plane such as (11-22) GaN produced according to the method of Baker with the motivation for doing so being to take advantage of a low-cost crystal growth technique which is capable of growing semipolar GaN crystals which eliminate or reduce the spontaneous and piezoelectric polarization effects in GaN optoelectronic devices occurring on polar or C-plane crystallographic surfaces. Id. at 3–4 (emphasis added). The Examiner found that the combination of Callahan and Baker does not “teach that the III-nitride seed crystal is grown in a [0001] direction and sliced into a shape having a desired orientation.” Id. at 5. The Examiner further found that Funato describes obtaining semipolar {11-22} GaN substrates for subsequent film growth by growing C-oriented GaN bulk crystals on sapphire substrates then cutting the resulting crystals in the desired crystallographic direction. Id. Based on these findings, the Examiner found that use of Funato’s cut material is seed crystals in the combined process of Callahan and Baker would been obvious to a person having ordinary skill in the art at the time of Appeal 2018-004610 Application 12/474,134 5 the invention because it “would involve nothing more than the use of a known process and/or material for its intended use.” Id. Appellants argue that the rejection of claim 12 should be reversed because the combination of Callahan and Baker is improper. Appeal Br. 5. In particular, Appellants argue that Baker’s process produces films of GaN on a sapphire substrate. Id. Appellants argue that Baker’s material cannot be used as seed crystals in Callahan’s solvo-thermal process because Baker does not describe separation of the semipolar GaN film from the sapphire. Id. Appellants assert that “no one of skill in the art would use the semipolar (11-22) GaN films combined with the sapphire substrate as a seed crystal for solvo-thermal growth.” Id. This argument is not persuasive for two reasons. First, it does not address the rejection the Examiner actually made. The Examiner rejected claim 12 based upon these of Funato’s cut material as seed crystals. Final Act. 5. Baker’s (11-22) semipolar film grown on a sapphire substrate is not used in the process the Examiner found to be described or suggested by the combination of Callahan, Baker, and Funato. Second, Appellants assertion that no one would use Baker’s material in Callahan’s process is attorney argument and is not supported by citation to the evidence of record or a reasoned explanation of the basis for this assertion. As such, it is entitled to little or no weight. Moreover even if Appellants were correct, Baker is not a necessary component of a § 103(a) rejection of claim 12. Funato contains a description that is cumulative of each portion of Baker that is used in the Appeal 2018-004610 Application 12/474,134 6 final rejection.6 Because Funato is cumulative of Baker, the Examiner could have rejected claim 12 as unpatentable over the combination of Callahan and Funato without Baker. Appellants also argue that the combination of Callahan, Baker, and Funato is improper because Funato’s (11-22) GaN is not suitable for use as seed crystal in Callahan’s solvo-thermal process. Appellants argue that Funato’s crystals likely are too large to fit into Callahan’s auto claims. Appeal Br. 7. This argument is not persuasive because it presumes that Funato’s crystals must be bodily incorporated into the process described in Callahan, including the exact equipment used by Callahan. This argument is erroneous. “It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc)); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“To justify combining reference teachings in support of a rejection it is not necessary that a device shown in one reference can be physically inserted into the device shown in the other.”). In view of the foregoing, we affirm the rejection of claim 12 as unpatentable over the combination of Callahan, Baker, and Funato. 6 For example, Funato describes the advantages of fabricating semiconductor components on a semipolar GaN surface. See Funato L659. This is cumulative of Baker's description, which the Examiner cited in the rejection. See Final Act. 3 (citing Baker L154). Appeal 2018-004610 Application 12/474,134 7 Rejection 2. The Examiner rejected claim 22 as unpatentable over the combination of Callahan, Baker, Funato, Dwilinski. Final Act. 8. Appellants stipulate that claim 22—which depends from claim 12—stands or falls with its parent independent claim. Appeal Br. 10. Because we have affirmed the rejection of claim 12, we also affirm the rejection of claim 22. CONCLUSION For the reasons set forth above we affirm the rejection of claims 12, 14, 19–22, 30, and 31 of the ’134 Application. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED