TOSHIBA MITSUBISHI-ELECTRIC INDUSTRIAL SYSTEMS CORPORATION et al.

Patent Trials and Appeals BoardApr 30, 2021

2020002536 (P.T.A.B. Apr. 30, 2021)

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. 14/782,229 10/02/2015 Takahiro HIRAMATSU 460604US8X PCT 6563 22850 7590 04/30/2021 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER HERNANDEZ-KENNEY, JOSE ART UNIT PAPER NUMBER 1717 NOTIFICATION DATE DELIVERY MODE 04/30/2021 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): OBLONPAT@OBLON.COM iahmadi@oblon.com patentdocket@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TAKAHIRO HIRAMATSU, HIROYUKI ORITA, TAKAHIRO SHIRAHATA, SHIZUO FUJITA, and TOSHIYUKI KAWAHARAMURA Appeal 2020-002536 Application 14/782,229 Technology Center 1700 Before ADRIENE LEPIANE HANLON, BRIAN D. RANGE, and LILAN REN, Administrative Patent Judges. REN, 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 5–9. See Final Act. 2, 6, 7. We have jurisdiction under 35 U.S.C. § 6(b). 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 “Toshiba Mitsubishi-Electric Industrial Systems Corporation, Kiyoto University, and Kochi Prefectural Public University Corporation.” Appeal Br. (the page of the Appeal Brief where the “REAL PARTY OF INTEREST” section is located lacks pagination). Appeal 2020-002536 Application 14/782,229 2 We AFFIRM and enter a new ground of rejection. CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: l. A film formation method comprising the steps of: (A) spraying a mist of a solution onto a substrate to form a zinc oxide film on an entire upper surface of said substrate: (B) stopping spraying of said solution onto said substrate; (C) after said step (B), exposing the entire upper surface of said substrate to plasma; and (D) suspending said step (C), wherein a series of the steps from said step (A) to said step (D) is set to one cycle, the series of steps is repeated singly onto said substrate for at least two cycles, and the method further comprises, during each of the one cycle for the at least two cycles, controlling a combination of (1) heating temperature for heating said substrate, (2) an amount of the sprayed mist of the solution, and (3) a period of the (A) spraying the mist of the solution, such that a thickness of the zinc oxide film formed by each of the one cycle is 0.57 nm or smaller. Claims Appendix (Appeal Br. 10). REFERENCES The prior art references relied upon by the Examiner are: Name Reference Date Yu US 5,131,752 July 21, 1992 Wang US 5,366,770 Nov. 22, 1994 Versteeg US 5,451,260 Sep. 19, 1995 Nikolov US 2005/0180014 A1 Aug. 18, 2005 Shirahata US 2011/0143053 A1 June 16, 2011 Appeal 2020-002536 Application 14/782,229 3 REJECTIONS Claims 1, 6, 7, and 8 are rejected under 35 U.S.C. § 103 based on Shirahata, Versteeg, and Nikolov. Final Act. 2. Claim 5 is rejected under 35 U.S.C. § 103 based on Shirahata, Versteeg, Nikolov, and Wang. Final Act. 6. Claim 9 is rejected under 35 U.S.C. § 103 based on Shirahata, Versteeg, Nikolov, and Yu. Final Act. 7. OPINION Claim 12 In rejecting claim 1, the Examiner acknowledges that Shirahata does not expressly teach “during each of the one cycle for the at least two cycles, controlling a combination of (1) heating temperature for heating said substrate, (2) an amount of the sprayed mist of the solution, and (3) a period of the (A) spraying the mist of the solution, such that a thickness of the zinc oxide film formed by each of the one cycle is 0.57 nm or smaller” and cites Versteeg and Nikolov for the teaching. Final Act. 3. The Examiner finds, and Appellant agrees, that Versteeg teaches “spraying onto substrates a fine mist from precursor solutions . . . in pulses (cycles) in order to better control deposition rate.” Compare Final Act. 3, with Appeal Br. 7 (stating that “Versteeg describes controlling film deposition rates as fine as monolayers per pulse” and acknowledging Versteeg “choses ‘a pulse duration’ and ‘a waiting time tw’ so that the 2 Appellant does not separately argue for the patentability of claims other than claim 1. See Appeal Br. 2–9. These claims stand or fall together. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-002536 Application 14/782,229 4 amount of precursor injected is designed to result in one equivalent monolayer of film growth per pulse”). The Examiner also finds, and Appellant agrees, that Nikolov teaches that “temperature of a substrate can affect the monolayer thickness.” Compare Final Act. 6, with Appeal Br. 8 (“Nikolov describes that the temperature of the substrate can affect the monolayer thickness.”). Based on the prior art teachings, the Examiner finds that a skilled artisan would have found it obvious to control these factors for an optimal film thickness. Final Act. 4–6. Appellant argues that the Examiner reversibly erred because “[n]one of the applied art even addresses maintaining a thickness of the zinc oxide film formed by each of the one cycle to be 0.57 nm or smaller.” Appeal Br. 4, 7–8. Appellant’s argument is unpersuasive because the argument attacks the references individually and does not address the Examiner’s rejection which is based on what the combined references would have suggested to the person of ordinary skill in the art. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellant also does not address the Examiner’s rationale to combine the references and no reversible error has been identified therein. Appellant’s argument that Versteeg does not teach or suggest the recited step (C) (Appeal Br. 8) is unpersuasive because the Examiner cites Shirahata for the teaching (Final Act. 2). Appellant’s argument with regard to a reference known as “Claus” is unpersuasive because it is not relied upon by the Examiner for the rejection. See Appeal Br. 7–8. Appeal 2020-002536 Application 14/782,229 5 Lastly, Appellant argues that the Specification including Figures 4 and 5 “sets forth significant benefits . . . realized with the claimed structures” (Appeal Br. 5) but does not explain why these illustrations show that the prior art is patentably distinguished. We further note that claim 1 is a method claim, not an apparatus claim, and Appellant’s argument regarding benefits of “the claimed structures” (id.) is unpersuasive for the additional reason that it is not based on the plain claim language. New Ground of Rejection The written description requirement under 35 U.S.C. § 112(a) requires the Specification must “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” In other words, the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citation omitted, alteration in original). In the “summary of claimed subject matter,” Appellant cites paragraphs 38–42 of the Specification as support for the limitation “during each of the one cycle for the at least two cycles, controlling a combination of (1) heating temperature for heating said substrate, (2) an amount of the sprayed mist of the solution, and (3) a period of the (A) spraying the mist of the solution, such that a thickness of the zinc oxide film formed by each of the one cycle is 0.57 nm or smaller.” Appeal Br. 2. Paragraphs 38 and 39 describe Figure 4 which shows that “[a]n increase in refractive index of the zinc oxide film typically indicates improvement in denseness (densification) of the zinc oxide film.” Spec. Appeal 2020-002536 Application 14/782,229 6 ¶ 38. Paragraphs 40 and 41 describe Figure 5 which shows that “resistivity decreases as the thickness of the thin film 15 formed in the single film formation process decreases.” Spec. ¶ 40. Paragraph 42 confirmed from FIGs. 4 and 5 that, in the case where plasma exposure is not performed in the non-film formation period, denseness (densification) of the zinc oxide film becomes noticeable when the thickness is 0.78 nm or smaller, and, in the case where plasma exposure is performed in the non-film formation period, denseness (densification) of the zinc oxide film becomes noticeable when the thickness is 0.57 nm or smaller. Spec. ¶ 42. These paragraphs do not sufficiently show possession of the limitation “controlling a combination of (1) heating temperature for heating said substrate, (2) an amount of the sprayed mist of the solution, and (3) a period of the (A) spraying the mist of the solution” as recited in claim 1. Paragraph 46 of the Specification, although not cited by Appellant for written description support for the limitation at issue, states: “It is thus important to control film formation conditions (heating temperature and the amount of mist solution supply) during film formation, the film formation period, and the like so that the thickness of the thin film 15 formed in the single film formation period decreases.” Spec. ¶ 46 (emphasis added). This disclosure, however, does not sufficiently show possession of the limitation “controlling . . . a period of the (A) spraying the mist of the solution” as recited in claim 1. Consistent with the plain language of claim 1, the “film formation method” includes various steps not limited to step (A) and “the film formation period” described in paragraph 46 includes the duration of the entire film forming process as opposed to the duration of a single step (A). Appeal 2020-002536 Application 14/782,229 7 Moreover, the Specification provides, in various paragraphs, disclosure regarding “a film formation method” encompassing multiple steps not limited to step (A). Spec. ¶¶ 1, 7, 11, 12, 28, 31. Thus, to the extent that the “film formation method” includes step (A), the original disclosure does not describe, either expressly or inherently, that “(3) a period of the (A) spraying the mist of the solution,” in combination with (1) and (2),3 is controlled to form the claimed thickness. Appeal Br. 10. Based on the foregoing, claim 1 and dependent claims 5–9 fail to meet the written description requirement. CONCLUSION The Examiner’s rejections are affirmed. The claims are additionally rejected for failure to comply with the written description requirement pursuant to 35 U.S.C. § 112(a). DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 6, 7, 8 103 Shirahata, Versteeg, Nikolov 1, 6, 7, 8 5 103 Shirahata, Versteeg, Nikolov, Wang 5 9 103 Shirahata, Versteeg, Nikolov, Yu 9 1, 5–9 112(a) Written Description 1, 5–9 3 As recited in claim 1, (1) is identified as “heating temperature for heating said substrate” and (2) is identified as “an amount of the sprayed mist of the solution.” Appeal Br. 10. Appeal 2020-002536 Application 14/782,229 8 Overall Outcome 1, 5–9 1, 5–9 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. Appeal 2020-002536 Application 14/782,229 9 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; 37 C.F.R. § 41.50(b)