Ex Parte Shirahata et al

Patent Trial and Appeal Board

Nov 26, 2018

14384603 (P.T.A.B. Nov. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/384,603 09/11/2014 Takahiro Shirahata
22850 7590 11/28/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
440987US99PCT 8926
EXAMINER
YOUNG, WILLIAM D
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
11/28/2018 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte TAKAHIRO SHIRAHATA, HIROYUKI ORITA,
AND TAKAHIRO HIRAMATSU
Appeal 2017-011632
Application 14/3 84,603 1
Technology Center 1700
Before KAREN M. HASTINGS, JENNIFER R. GUPTA,
and JANEE. INGLESE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 3, 4 and 7-10 under 35 U.S.C. §103(a) as unpatentable
over Orita et. al. (US 2011/0151619 Al, published June 23, 2011)
(hereinafter "Orita") in view of J.G. Lu et al., Zno-based Thin Films
Synthesized By Atmospheric Pressure Mist Chemical Vapor Deposition,
1 The real party in interest is stated to be Toshiba Mitsubishi-Electric
Industrial Systems Corporation (Appeal Br. 2).
Appeal 2017-011632
Application 14/384,603
299 J. Crystal Growth 1 (2007) (hereinafter "Lu"). 2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
Claim 1 is illustrative of the claimed subject matter ( emphasis added
to highlight disputed limitation):
1. A method for producing metal oxide film, the
method comprising:
(A) spraying a solution comprising zinc onto a
substrate placed under non-vacuum;
(B) spraying a dopant solution comprising a
dopant onto the substrate, wherein the dopant is at least
one of boron, gallium, indium and aluminum; and
(C) performing, on a metal oxide film deposited
on the substrate obtained after said spraying (A) and said
spraying (B), a resistance reducing treatment by
irradiating the metal oxide film with ultraviolet rays that
does not involve rearrangement of crystals of the metal
oxide film,
wherein a molar concentration of the dopant
supplied to the substrate in said spraying (B) with respect
to a molar concentration of zinc supplied to the substrate
in said spraying is not less than 0.4% when the dopant is
at least one of boron, indium and aluminum and is not
less than 0.33% when the dopant is gallium.
OPINION
We reverse the rejection.
2 The Examiner's§ 102 rejection of claims 1, 3, and 10 was withdrawn as
claim 1 was amended to incorporate the limitation of the now canceled
claim 2 (Ans. 3; see also Appeal Br. 5).
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Appeal 2017-011632
Application 14/384,603
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). To
establish a prima facie case of obviousness, the examiner must show that
each and every limitation of the claim is described or suggested by the prior
art or would have been obvious based on the knowledge or ordinary
creativity of those of ordinary skill in the art. In re Fine, 83 7 F .2d 1071,
1074 (Fed. Cir. 1988); see also KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007).
A preponderance of the evidence supports Appellants' position that
the Examiner has failed to show where Orita, or Orita in combination with
Lu, teaches or suggests step c) of claim 1 (Appeal Br. 6; Reply Br. 2).
As Appellants point out, the claim on appeal requires irradiating the
metal oxide film with UV rays after the film is formed in steps a) and b ),
whereas Orita at best merely teaches irradiating the ozone in the reaction
chamber while the metal oxide film is being formed (Orita ,r,r 107, 108,
109). Appellants' Specification describes and shows irradiating the formed
metal oxide film with UV rays (e.g., Spec. ,r,r 29, 30, Fig. 2). The Examiner
has not adequately explained how Orita's irradiation of the ozone used in the
reaction vessel during formation of the metal oxide film would have also
irradiated the metal oxide film formed on the substrate (Ans. 5, 6).
Thus, on the record before us, the Examiner has not adequately
addressed Appellants' position and thus has not shown that each and every
limitation of the claim is either described or suggested by the prior art or
would have been obvious based on the knowledge and ordinary creativity of
the ordinary artisan. See In re Fine, 837 F.2d at 1074; see also In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("A rejection based on section
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Appeal 2017-011632
Application 14/384,603
103 clearly must rest on a factual basis, and these facts must be interpreted
without hindsight reconstruction of the invention from the prior art."). The
fact finder must be aware "of the distortion caused by hindsight bias and
must be cautious of arguments reliant upon ex post reasoning." KSR, 550
U.S. at 421 (2007) (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966)
( warning against a "temptation to read into the prior art the teachings of the
invention in issue")).
For the reasons set forth above, we reverse the rejection.
DECISION/ORDER
It is ordered that the Examiner's decision is reversed.
REVERSED
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