Ex parte Bhargava et al.

Board of Patent Appeals and Interferences

Aug 24, 2000

08050693 (B.P.A.I. Aug. 24, 2000)

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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today was not written for publication in a law
journal and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RAMESHWAR BHARGAVA and DENNIS GALLAGHER
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Appeal No. 1997-4321
Application No. 08/050,693
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ON BRIEF
________________
Before KIMLIN, PAK and KRATZ, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 11-
15 and 17. Claims 1-10 and 19-29 have been allowed by the
examiner, whereas claims 16 and 18, the other claims remaining
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in the present application, have been objected to by the
examiner. Claim 11 is illustrative:
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11. A doped particle of semiconductor material having a
diameter of less than 100 D with a doping % of less than 1%.
The examiner relies upon the following reference as
evidence of obviousness:
Ying Wang et al. (Wang), "Three-Dimensionally Confined Diluted
Magnetic Semiconductor Clusters: Zn Mn S," 77 Solid State1-x x
Communications no. 1, 33-38 (1991)
As recited in independent claim 11, appellants' claimed
invention is directed to a particle of semiconductor material
having a doping percent of less than 1%. An example of the
doped semiconductor material encompassed by claim 11 is ZnS
doped with Mn.
Appellants submit four separate groupings for the
appealed claims at page 5 of the Brief. However, the ARGUMENT
section of the Brief fails to present any argument that is
reasonably specific to any particular claim on appeal.
Accordingly, all the appealed claims stand or fall together
with claim 11. In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d
1525, 1528 (Fed. Cir. 1987). See also 37 CFR § 1.192(c)(5)
and (c)(6) (1994).
Appeal No. 1997-4321
Application No. 08/050,693
The examiner misstates at page 3 of the Answer that1
claim 10 stands rejected under § 103. However, page 1 of the
examiner's final rejection states that claim 10 is allowed and
claims 11 to 15 and 17 are rejected.
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Appealed claims 11-15 and 17 stand rejected under
35 U.S.C. § 103 as being unpatentable over Wang.1
We have thoroughly reviewed each of appellants' arguments
for patentability. However, we are in full agreement with the
examiner that the subject matter defined by appealed claim 11,
with which all the appealed claims stand or fall, would have
been obvious to one of ordinary skill in the art within the
meaning of § 103 in view of the Wang disclosure. Accordingly,
we will sustain the examiner's rejection for essentially those
reasons expressed in the Answer, and we add the following
primarily for emphasis.
Appellants do not dispute that Wang discloses a
semiconductor material comprising ZnS and Mn, the composition
exemplified in the present specification, having a diameter of
less than 100 D. Appellants contend, however, that Wang
discloses a semiconductor alloy and "never suggests doping
rather than alloying a semiconductor material, and never
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suggests an impurity concentration of less than 1%" (page 7 of
Brief).
We are not persuaded by this argument because Wang
expressly teaches that "the Mn doping level is controlled by
varying this ratio of Zn/Mn nitrates in this original
solution" (page 34, column 1, first full paragraph, emphasis
added). Hence, we agree with the examiner that the
distinction between ZnS doped or alloyed with Mn is a
semantical one without significant difference. As for the
claimed amount of dopant of less than 1%, Wang discloses that
Mn is present in an amount of less than 0.1 (10%), which
encompasses the claimed amount of less than 1% (see page 33,
column 2, last paragraph). In addition, Wang evidences that
it was known in the art to dope ZnSe with Mn with an amount in
the range of greater than 0% and less than 0.55% (page 35,
column 2). In addition, as pointed out by the examiner, Wang
discloses that it was known to tune the band parameters and
lattice constants of the semi-conductor by varying the
composition and doping level of the Mn (see page 33, column 1,
first paragraph, and page 34, column 1, lines 15-17).
Accordingly, we agree with the examiner that it was known in
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the art to vary the Mn doping concentration as a result-
effective variable and, therefore, it would have been prima
facie obvious for one of ordinary skill in the art to utilize
a doping concentration of less than 1%. In re Boesch, 617
F.2d 272, 205 USPQ 215 (CCPA 1980).
Moreover, it is well settled that where patentability is
predicated upon a change in a condition of a prior art
composition, such as a change in concentration or the like,
the burden is on the applicant to establish with objective
evidence that the change is critical, i.e., it leads to a new,
unexpected result. In re Woodruff, 919 F.2d 1575, 1578, 16
USPQ2d 1934, 1936 (Fed. Cir. 1990); In re Aller, 220 F.2d 454,
456, 105 USPQ 233, 235 (CCPA 1955). We have not overlooked
appellants' contention that "the unexpectedly good results
(282 nm photo luminescent emission) underscore the critical
functional relationship between the dopant level (less than
1%) and the excitation frequency, a relationship not at all
appreciated by Wang" (page 12 of Brief). However, appellants
have not carried their burden on this record of establishing
that the emission results disclosed in the present
specification for the specific composition, ZnS doped with Mn,
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would have been considered truly unexpected by one of ordinary
skill in the art in light of the Wang disclosure. In re Merck
& Co., 800 F.2d 1091, 1099,
231 USPQ 375, 381 (Fed. Cir. 1986); In re Klosak, 455 F.2d
1077, 1080, 173 USPQ 14, 16 (CCPA 1972). Furthermore, the
examiner has lodged the valid criticism that the specification
results are hardly commensurate in scope with the degree of
protection sought by appealed claim 11, which embraces any
semiconductor material of the recited diameter having a dopant
level of less than 1%. In re Grasselli, 713 F.2d 731, 743,
218 USPQ 769, 778 (Fed. Cir. 1983); In re Clemens, 622 F.2d
1029, 1035, 206 USPQ 289, 296 (CCPA 1980).
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is affirmed.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
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CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
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PETER F. KRATZ )
Administrative Patent Judge )
ECK:clm
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Corporate Patent Counsel
U.S. Philips Corp.
580 White Plains Road
Tarrytown, NY 10591