Ex parte Edlinger

• Decision Date: 27 November 2001
• Docket Number: Appeal 2000-0038,Application 08/751,369
• Parties: Ex parte JOHANNES EDLINGER and HELMUT RUDIGIER
• Court: Patent Trial and Appeal Board

Ex parte JOHANNES EDLINGER and HELMUT RUDIGIER

Appeal No. 2000-0038

Application 08/751, 369

United States Patent and Trademark Office, Patent Trial and Appeal Board

November 27, 2001

This Opinion is Not binding Precedent of the Board.

ON BRIEF

Before PAK, OWENS and KRATZ, Administrative Patent Judges.

DECISION ON APPEAL

OWENS Administrative Patent Judge.

This is an appeal from the examiner's final rejection of claims 10-12, 17, 18, 20, 21, 23-34, 36-41, 43 and 44, which are all of the claims remaining in the application.

THE INVENTION

The appellants' claimed invention is directed toward a process for making an optical waveguide. Claim 10 is illustrative:

10. A process for the production of an optical waveguide comprising the steps of:

(a) shaping a substrate consisting essentially of organic material only;

(b) applying at least one intermediate layer by a vacuum coating process, onto the substrate; and

c) applying a waveguide layer by means of a reactive physical vapor deposition (PVD) process, onto the intermediate layer the reactive physical vapor deposition process being reactive DC sputtering.

THE REFERENCE

Heming et al. (Heming)

5, 369, 722

Nov. 29, 1994(filed Sep. 18, 1992)

The REJECTION

Claims 10-12, 17, 18, 20, 21, 23-34, 36-41, 43 and 44 stand rejected under 35 U.S.C. § 103 as being unpatentable over Heming.

OPINION

We affirm the rejection of claims 10-12, 17, 18, 20, 21, 23-34 37, 38, 40, 41, 43 and 44, and reverse the rejection of claims 36 and 39.

The appellants state that the claims stand or fall in the following groups: A) claims 10, 11, 17, 18, 20, 25, 26 and 40; B) claim 12; C) claims 21, 31 and 32; D) claims 23 and 24; E) claim 27; F) claim 28; G) claims 29 and 30; H) claims 33 and 34; (I) claim 36; J) claims 37 and 38; K) claim 39; L) claim 41; and M) claims 43 and 44 (brief, pages 8-9). The appellants, however, do not provide a substantive argument for the separate patentability of claim 12. This claim therefore, stands or falls with claim 10 from which it depends. Thus, we limit our discussion to one claim in each group except group B, i.e., respectively, claims 10, 31, 23, 27, 28, 29, 33, 36, 37, 39, 41 and 43. See In re Ochiai, 71 F.3d 1565, 1566 n.2, 37 U.S.P.Q.2d 1127, 1129 n.2 (Fed. Cir. 1995); In re Burckel, 592 F.2d 1175, 1178-9, 201 U.S.P.Q. 67, 70 (CCPA 1979); In re Herbert, 461 F.2d 1390, 1391, 174 U.S.P.Q. 259, 260 (CCPA 1972); 37 CFR § 1.192(c)(7)(1997).

Claim 10

Heming discloses a process for producing an optical waveguide (col. 1, lines 9-11). The waveguide substrate can be a synthetic resin or a material having a "high organic proportion", i.e., more than 0.1 hydrocarbon group per metallic atom of an oxide (col. 3, lines 24-26 and 36-43). The substrate preferably is a synthetic resin film (col. 4, lines 58-59). In one preferred embodiment at least one intermediate layer is applied to the substrate (col. 7, lines 3-6). The intermediate layer can be applied by any method which is suitable for yielding a compact layer devoid of column structures, and preferably is applied by a vacuum coating process (col. 8, lines 44-47; col. 12, lines 51-59). A waveguide layer is applied to the intermediate layer by known coating methods, the exemplified methods including ion-enhanced PVD (col. 6, lines 12-22). It is undisputed that ion-enhanced PVD methods include reactive DC sputtering.

The appellants argue that Heming does not specifically disclose forming the waveguide layer by reactive sputtering and would not clearly have taught one of ordinary skill in the art which method to use to deposit a waveguide layer onto an organic substrate material (brief, pages 9-10; reply brief, pages 2-3). Although Heming does not specifically disclose reactive sputtering, the disclosed ion-enhanced PVD includes ion-enhanced sputtering, and the appellants state that ion sputtering is a form of reactive sputtering (brief, page 11). Moreover, the appellants acknowledge that reactive DC sputtering was a well known deposition process at the time of the appellants' inventionm(brief, page 15).^[1] Heming, therefore, would have fairly suggested, to one of ordinary skill in the art, forming the waveguide layer by reactive DC sputtering. Because Heming does not limit the disclosed waveguide layer formation methods to any particular disclosed substrate material, the reference would have fairly suggested, to one of ordinary skill in the art, using any of the disclosed waveguide layer formation methods in combination with any of the disclosed substrate materials. For this reason and because ion-enhanced PVD is one of only three exemplified types of deposition methods (col. 6, lines 16-18), and synthetic resins are one of only two disclosed types of substrate materials (col. 3, lines 24-25), Heming would have fairly suggested, to one of ordinary skill in the art, using a synthetic resin substrate in combination with waveguide layer formation by ion-enhanced PVD.

The appellants argue that Heming prefers to deposit the waveguide layer by PCVD, especially PICVD (col. 12, lines 61-63), and that in Heming's examples, only microwave PICVD is used(col. 13, lines 45-48) (brief, pages 14-16; reply brief, page 3). Heming's disclosure, however, is not limited to the preferred embodiment or to the examples. See In re Fracalossi, 681 F.2d 792, 794 n.1, 215 U.S.P.Q. 569, 570 n.1 (CCPA 1982); In re Kohler, 475 F.2d 651, 653, 177 U.S.P.Q. 399, 400 (CCPA 1973); In re Mills, 470 F.2d 649, 651, 176 U.S.P.Q. 196, 198 (CCPA 1972); In re Bozek, 416 F.2d 1385, 1390, 163 U.S.P.Q. 545, 549 (CCPA 1969). Instead, all disclosures in the reference must be evaluated for what they would have fairly suggested to one of ordinary skill in the art. See In re Boe, 355 F.2d 961, 965, 148 U.S.P.Q. 507, 510 (CCPA 1966). The disclosures by Heming discussed above would have fairly suggested, to one of ordinary skill in the art, using reactive DC sputtering to form a waveguide layer on a synthetic resin substrate.

The appellants argue that Heming's preference for PCVD and PICVD indicates that ion sputtering is not a valuable method for depositing the waveguide layer (brief, page 15). This argument is incorrect because Heming teaches that ion-enhanced PVD processes are effective for forming the waveguide layer (col. 6, lines 12-18).

The appellants argue that it is not clear why, in view of the fact that ion sputtering such as reactive DC sputtering was known to have the advantages of controllability, high rate of deposition and rather low cost, Heming would not have disclosed ion sputtering as a method for forming the waveguide layer (brief, pages 15-17). The appellants provide no evidence that ion sputtering has these advantages. The appellants provide only argument of counsel, and such argument cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705, 222 U.S.P.Q. 191, 196 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315, 203 U.S.P.Q. 245, 256 (CCPA 1979); In re Greenfield, 571 F.2d 1185, 1189, 197 U.S.P.Q. 227, 230 (CCPA 1978); In re Pearson, 494 F.2d 1399, 1405, 181 U.S.P.Q. 641, 646 (CCPA 1974). Regardless of any benefits of reactive DC sputtering, Heming's teaching that ion-enhanced PVD, which includes reactive DC sputtering, is an effective method for forming the waveguide layer (col. 6, lines 12-18) would have been sufficient to have fairly suggested, to one of ordinary skill in the art, forming the waveguide layer by reactive DC sputtering.

The appellants argue that because their specification teaches that their process produces a sufficiently critical waveguide layer despite the fact that an essentially organic substrate is used, and Heming teaches that such a substrate introduces its own set of difficulties in achieving a serviceable waveguide layer, the appellants' specification provides evidence of unexpected results (reply brief, page 3). This argument is not well taken because the appellants have not provided a side-by-side comparison, commensurate in scope with the claims, of their claimed invention with the closest prior art, and have not explained why the results would have been unexpected by one of ordinary skill in the art. See In re Baxter Travenol Labs., 952 F.2d 388, 392, 21 U.S.P.Q.2d 1281, 1285 (Fed. Cir. 1991); De Blauwe, 736 F.2d at 705, 222 U.S.P.Q. at 196; In re Grasselli, 713 F.2d 731, 743, 218 U.S.P.Q. 769, 778 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035, 206 U.S.P.Q. 289, 296 (CCPA 1980); In re Freeman, 474 F.2d 1318, 1324, 177 U.S.P.Q. 139, 143 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080, 173 U.S.P.Q. 14, 16 (CCPA 1972).

The preponderance of the evidence, therefore, indicates that the process recited in the appellants' claim 10 would have been obvious to one of ordinary skill in the art within the meaning of 35 U.S.C. § 103.

Claim 31

Heming discloses that the intermediate layer can be, and in one embodiment preferably is, SiO₂ (col. 8, lines 48-50 and 57-58). Since the claim recites "at least one of SiO₂ and a mixture of SiO₂ and TiO₂ and of Si₃N₄", the appellants' argument (brief, page 17) that Heming does not disclose the recited materials other than SiO₂ is irrelevant.

Claim 23

The appellants argue that Heming does not disclose depositing the waveguide layer at low temperature using reactive sputtering (brief, pages 17-18). Heming's teachings that the synthetic resin substrate is to be heated to a temperature which is lower than its glass transition temperature (col. 3 lines 26-27), and that some of the synthetic resins have long term usage temperatures below 100ºC (col. 4, lines 25-26 and 51-54), would have fairly suggested, to one of ordinary skill in the art, carrying out any of the disclosed waveguide layer formation processes, including ion-enhanced PVD (col....