NGK INSULATORS, LTD.

Patent Trials and Appeals Board

Feb 10, 2022

2021001133 (P.T.A.B. Feb. 10, 2022)

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. 15/223,099 07/29/2016 Masahiko Namerikawa 1027-0119 8543 93263 7590 02/10/2022 Tomoko Nakajima Cermak Nakajima & McGowan LLP 2000 Duke Street, Suite 300 Alexandria, VA 22314 EXAMINER MAI, ANH D ART UNIT PAPER NUMBER 2829 NOTIFICATION DATE DELIVERY MODE 02/10/2022 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): TNakajima@cnmiplaw.com USPTO@dockettrak.com ip@cnmiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASAHIKO NAMERIKAWA, TAKASHI YOSHINO, YOSHITAKA KURAOKA, and MASAHIRO SAKAI Appeal 2021-001133 Application 15/223,099 Technology Center 2800 Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and JENNIFER R. GUPTA, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1 and 8. Claims 9-17 have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as NGK Insulators, Ltd. (Appeal Br. 2.) Appeal 2021-001133 Application 15/223,099 2 CLAIMED SUBJECT MATTER Claim 1 is representative of the claims on appeal and is reproduced below: 1. A composite substrate comprising: a substrate having a surface with a three-dimensional shape, wherein the surface with a three-dimensional shape comprises a layer composed of oriented polycrystalline alumina, or wherein an entirety of the substrate is composed of oriented polycrystalline alumina; and a group 13 element nitride crystal layer formed on the oriented polycrystalline alumina of the substrate, wherein the group 13 element nitride crystal layer has a structure in which grains are mostly in conformity with crystal orientation of the oriented polycrystalline alumina, wherein the three-dimensional shape is a macroscopic shape having a visible three dimensional profile including a curved shape and/or a concave/convex shape, and wherein the substrate is (i) a composite comprising a base substrate and a layer composed of oriented polycrystalline alumina on the base substrate, and the layer composed of oriented polycrystalline alumina is formed by laser CVD and/or lamp-heating CVD or (ii) composed of an oriented polycrystalline alumina sintered body. The Examiner rejected claims 1 and 8 under 35 U.S.C. § 103 as obvious over Tadatomo (US 7,053,420 B2, issued May 30, 2006) in view of Niimi (JP 2004-359495, published Dec. 24, 2004). OPINION We review the appealed rejection for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error Appeal 2021-001133 Application 15/223,099 3 in the examiner’s rejections . . . .” (citing Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential))). Appellant presents arguments to appealed claims as a group. Accordingly, we limit our discussion to independent claim 1, the only independent claim on appeal. Appellant argues Tadatomo requires the use of single-crystal sapphire substrates, and replacing the sapphire with oriented polycrystalline alumina would remove a critical feature of the Tadatomo device. (Appeal Br. 6.) Appellant argues Tadatomo utilizes etching to form the three-dimensional structure in the crystalline substrate and if such a technique was utilized on the polycrystalline substrate of the claimed invention surface imperfections would result due to detachment of grains. Appellant argues the surface imperfections would deter a person of ordinary skill in the art from modifying the device of Tadatomo according to the disclosure of Niimi. (Appeal Br. 7.) Appellant’s arguments for patentability are not persuasive for the reasons the Examiner presents. We add the following. Niimi teaches polycrystalline alumina substrate is suitable as a replacement for sapphire substrate for epitaxial growth of GaN layers. (Niimi ¶ 4.) Tadatomo teaches forming a semiconducting light emitting element comprising GaN film on an oriented alumina (sapphire) substrate that comprises a three-dimensional shape (convexities and concavities). (Tadatomo col. 6, ll. 7-16.) Tadatomo discloses “[t]he whole location pattern of concaves and convexes may be any as long as it can exert an influence on the wave of light in the lateral direction.” (Tadatomo col. 8, ll. 21-23.) Tadatomo teaches the GaN layer is grown on the concavo-convex Appeal 2021-001133 Application 15/223,099 4 substrate. (Tadatomo col. 9, ll. 7-22.) Tadatomo teaches “[t]he light- emitting element enhances, in any embodiment, the light-extraction efficiency by the action and effect of a concavo-convex refractive index interface formed downward of the light-emitting layer.” (Tadatomo col. 6, ll. 33-37.) Thus, a person of ordinary skill in the art would have reasonably expected that a GaN layer grown on a polycrystalline alumina concavo- convex substrate would have been suitable for a light-emitting element such as described by Tadatomo. “For obviousness under § 103, all that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988). Appellant’s argument that Tadatomo’s etching technique for creating concavo-convex substrate would deter a person of ordinary skill in the art from utilizing a polycrystalline alumina substrate have not been supported by evidence on the present record. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (argument by counsel cannot take the place of evidence). Appellant has not directed us to evidence that explains why a polycrystalline alumina layer is unsuitable for creating a concavo-convex structure. Tadatomo does not place specific limits on the size of the concavo-convex structure. Appellant has not directed us to evidence that establishes why a polycrystalline alumina substrate is unsuitable for subsequent etching treatments. Appellant’s argument that the substrate of Tadatomo does not have the macroscopic three-dimensional shape as required by the claimed invention is not persuasive. (Reply Br. 2-3.) As set forth above, Tadatomo discloses the pattern of concaves and convexes is not limited as long as it can exert an influence on the wave of light in the lateral direction. Appeal 2021-001133 Application 15/223,099 5 (Tadatomo col. 8, ll. 21-23.) Appellant has not directed us to evidence that a substrate having macroscopic concavities and convexities do not exert an influence on the wave of light in the lateral direction as required by Tadatomo. For the foregoing reasons and those the Examiner presents, we sustain the appealed rejection. CONCLUSION Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 8 103 Tadatomo, Niimi 1, 8 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED