Ex parte Fujisaki et al.

Board of Patent Appeals and Interferences

Nov 30, 2000

08108499 (B.P.A.I. Nov. 30, 2000)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 72
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte YOSHIHISA FUJISAKI, YUKIO TAKANO
and TSUTOMU ISHIBA
____________
Appeal No. 1998-1660
Application No. 08/108,499
____________
HEARD: Nov. 14, 2000
____________
Before RUGGIERO, DIXON, and GROSS, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of
claims 11-15, all of the claims pending in the present
application. Claims 1-10 have been canceled.
The claimed invention relates to a GaAs (gallium
arsenide) single crystal in the form of a wafer. The
distribution of lattice constants across the surface of the
Appeal No. 1998-1660
Application No. 08/108,499
2
wafer is controlled to satisfy a particular inequality
relationship.
Claim 11 is illustrative of the invention and reads as
follows:
11. A GaAs single crystal characterized in that the ratio
D/d satisfies the following inequalities in a latticeo
constant measurement area of a wafer of said GaAs,
4 X 10- # D/d # 4 X 10 ; and6 -5o
that a density of contained Si atoms is at most 1 x 10 cm- ;16 3
wherein said wafer has at least one straight-line length
extending at least 2.5 cm in bidirection from its center, said
lattice constant measurement area means an area of said wafer
on a straight-line extending at least 2.5 cm in bidirection
from the center of the wafer, D is defined as the value of
difference between the maximum and minimum values of lattice
constants measured entirely across said lattice constant
measurement area at room temperature, with a series of
individual measurements having a unit measurement area of 1 -
100 mm arranged on said straight line, the unit measurement2
area being an area on which a measurement was taken by a
measuring device; and d is defined as the lattice constant ato
room temperature of stoichiometric composition GaAs single
crystal being the theoretical composition of GaAs single
crystal.
The Examiner relies on the following prior art:
Clarke et al. (Clarke) 4,544,417 Oct. 1,
1985
(Filed May 27, 1983)
S. M. Sze (Sze), Physics of Semiconductor Devices, 33 (Second
Edition, John Wiley & Sons, 1981).
Appeal No. 1998-1660
Application No. 08/108,499
As a result of a Decision on Petition, the Examiner’s1
original statement of the ground of rejection under 35 U.S.C.
§ 103 in the Examiner’s Answer was vacated and restated as a
new ground of rejection in a first Supplemental Examiner’s
Answer dated March 19, 1997.
3
Sorab K. Ghandhi (Ghandhi), VLSI Fabrication Techniques, 86-
90,
98-100 (John Wiley & Sons, 1983).
Claims 13 and 14 stand rejected as being based on an
inadequate disclosure under the first paragraph of 35 U.S.C.
§ 112. Claims 11-14 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Ghandhi. In a separate rejection,
claims 11-15 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness, the Examiner offers the combination
of Ghandhi and Sze with respect to claim 11-14, and adding
Clarke to the basic combination with respect to claim 15.1
Appeal No. 1998-1660
Application No. 08/108,499
The Appeal Brief was filed February 20, 1996. In2
response to the Examiner’s Answer dated October 11, 1996, a
Reply Brief was filed December 11, 1996 which was originally
denied entry by the Examiner. A resubmitted Reply Brief filed
in response to the new ground of rejection was filed May 19,
1997 to which the Examiner responded with a second
Supplemental Examiner’s Answer on August 7, 1997. A
Supplemental Reply Brief in response was filed by Appellants
on October 7, 1997.
4
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the Briefs and Answers for the2
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the Examiner, the arguments
in support of the rejections and the evidence of anticipation
and obviousness relied upon by the Examiner as support for the
prior art rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, Appellants’
arguments set forth in the Briefs along with the Examiner’s
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Application No. 08/108,499
5
rationale in support of the rejections and arguments in
rebuttal set forth in the Examiner’s Answers.
It is our view, after consideration of the record before
us, that the disclosure in this application describes the
claimed invention in a manner which complies with the
requirements of the first paragraph of 35 U.S.C. § 112. We
are also of the view that the disclosure of Ghandhi does not
fully meet the invention as set forth in claims 11-14. In
addition, we are of the conclusion that the evidence relied
upon and the level of skill in the particular art would not
have suggested to one of ordinary skill in the art the
obviousness of the invention as set forth in claims 11-15.
Accordingly, we reverse.
We consider first the rejection of claims 13 and 14 under
the first paragraph of 35 U.S.C. § 112. We note that the
Examiner, instead of relying on the ‘written description” or
“enablement” language of the statute, has used the terminology
“lack of support” in the statement of the rejection. Our
reviewing court has made it clear that written description and
enablement are separate requirements under the first paragraph
of 35 U.S.C. § 112. Vas-Cath Inc. v. Mahurkar, 935 F. 2d
Appeal No. 1998-1660
Application No. 08/108,499
6
1555, 1560, 19 USPQ 2d 1111, 1114 (Fed. Cir. 1991). The
terminology “lack of support” has also been held to imply a
reliance on the written description requirement of the
statute. In re Higbee and Jasper, 527 F. 2d 1405, 188 USPQ
488, 489 (CCPA 1976).
In view of the factual situation presented to us in this
instance we will interpret the Examiner’s basis for the 35
U.S.C. § 112, first paragraph rejection as reliance on the
“written description” portion of the statute. “The function
of the description requirement [of the first paragraph of 35
U.S.C.
§ 112] is to ensure that the inventor has possession, as of
the filing date of the application relied on, of the specific
subject matter later claimed by him.” In re Wertheim, 541 F.
2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). "It is not
necessary that the application describe the claim limitations
exactly, . . . but only so clearly that persons of ordinary
skill in the art will recognize from the disclosure that
appellants invented processes including those limitations."
Wertheim, 541 F.2d at 262, 191 USPQ at 96 citing In re
Smythe, 480 F.2d 1376, 1382, 178 USPQ 279, 284 (CCPA 1973).
Appeal No. 1998-1660
Application No. 08/108,499
7
The Examiner asserts (Answer, page 4) that, since silicon
is the only impurity mentioned in the specification, there is
no support for the claim language which, in the Examiner’s
interpretation, requires total impurity concentration to be
less than 1x10 cm (claim 13) or less than 1x10 cm (claim16 -3 15 -3
14). Our review of Appellants’ disclosure, however, reveals
that the formation of a GaAs crystal with the defined impurity
concentrations is clearly set forth, for example, at page 10,
line 4 and page 12, line 6. We agree with Appellants that
there is nothing in their disclosure that would limit the
impurity concentration to silicon. In our opinion, Appellants
have satisfied the statutory written description requirement
because they were clearly in possession of the invention at
the time of filing of the application. Therefore, we do not
sustain the rejection of claims 13 and 14 under the first
paragraph of 35 U.S.C. § 112.
We next consider the Examiner’s 35 U.S.C. § 102(b)
rejection of claims 11-14 as being anticipated by Ghandhi.
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as
Appeal No. 1998-1660
Application No. 08/108,499
8
well as disclosing structure which is capable of performing
the recited functional limitations. RCA Corp. v. Applied
Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L.
Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984).
With respect to independent claims 11 and 12, the
Examiner attempts (Answer, pages 5 and 6) to read the various
claim limitations on the Ghandhi reference. In particular,
the Examiner points to the disclosure at page 87 of Ghandhi
which suggests a particular range of melt temperature
variation during crystal growth. In the Examiner’s line of
reasoning, this temperature control criteria will inherently
produce a GaAs crystal which would satisfy the particular
claimed silicon atom density and lattice constant inequality
relationship requirement.
After reviewing the disclosure of Ghandhi in light of the
arguments of Appellants and the Examiner, we are in agreement
with Appellants that the Examiner’s conclusion of inherency is
lacking of any support on the record. To establish inherency,
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Application No. 08/108,499
9
evidence must make clear that the missing descriptive matter
is necessarily present in the thing described in the reference
and would be recognized as such by persons of ordinary skill.
In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51
(Fed. Cir. 1999) citing Continental Can Co. v. Monsanto Co.,
948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
“Inherency, however, may not be established by probabilities
or possibilities. The mere fact that a certain thing may
result from a given set of circumstances is not sufficient.”
Id. citing Continental, 948 F.2d at 1269, 20 USPQ2d at 1749.
As correctly asserted by Appellants (Brief, page 16),
Ghandhi describes a crystal growing process in which the
temperature of the melt is maintained constant (within a
tolerance range of plus or minus ½E C) over the duration of
the crystal growing process. In Appellants’ disclosed
crystal growing process, on the other hand, the temperature of
the melt is intentionally varied over time, i.e. the rate of
change of the melt temperature is controlled to reduce the
magnitude of lattice distortions to satisfy the claimed
inequality relationship. In our view, since the crystal
growing processes described by Ghandhi and Appellants are so
Appeal No. 1998-1660
Application No. 08/108,499
10
fundamentally different, the Examiner’s conclusion that
Ghandhi’s process will produce a crystal which satisfies the
claimed relationships can only be based on unfounded
speculation. Accordingly, since all of the claimed
limitations are not disclosed by Ghandhi, or inherent therein,
the Examiner’s rejection under 35 U.S.C. § 102(b) of
independent claims 11 and 12, as well as claims 13 and 14
dependent thereon, is not sustained.
Turning to the Examiner’s separate rejection of claims
11-14 as being unpatentable under 35 U.S.C. § 103 over the
combination of Ghandhi and Sze, we do not sustain this
rejection as well. As the basis for this rejection, the
teachings of Sze, which provide a chart linking resistivity to
impurity concentration, have been added to Ghandhi to buttress
the Examiner’s assertion of the inherency of Ghandhi’s
disclosed crystal growing process in producing a GaAs crystal
as claimed.
We agree with Appellants, however, that the teachings of
Sze do not cure the deficiencies of Ghandhi for all of the
reasons discussed supra. In our view, the limited showing of
a resistivity-impurity concentration link provided by Sze,
Appeal No. 1998-1660
Application No. 08/108,499
11
does not add any support for the Examiner’s unfounded
conclusion that Ghandhi’s crystal growing process will
inherently produce a GaAs crystal with a particular lattice
constant distribution which would satisfy the inequality
relationship as recited in the claims on appeal. Therefore,
since all of the limitations of the appealed claims are not
taught or suggested by the prior art, the Examiner has not
established a prima facie case of obviousness. Accordingly,
the Examiner’s 35 U.S.C. § 103 rejection of claims 11-14 is
not sustained.
With respect to dependent claim 15 which is limited to a
particular wafer diameter dimension of “at least 5 cm”, the
Examiner has added Clarke to the basic combination of Ghandhi
and Sze. It is apparent, however, from page 7 of the Answer,
that the Examiner has relied on Clarke for the limited
teaching of disclosing the availability of 2 to 3 inch
diameter (i.e. “at least 5cm”) wafers. We find nothing,
however, in the disclosure of Clarke which overcome the
deficiencies of Ghandhi or Sze discussed supra. Therefore,
the Examiner’s obviousness rejection of dependent claim 15 is
not sustained.
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Application No. 08/108,499
12
In summary, we have not sustained any of the Examiner’s
rejections of the claims on appeal. Therefore, the decision
of the Examiner rejecting claims 11-15 is reversed.
REVERSED
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
Appeal No. 1998-1660
Application No. 08/108,499
13
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
lp
Appeal No. 1998-1660
Application No. 08/108,499
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Antonelli, Terry, Stout & Kraus
Suite 1800
1300 North 17th Street
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Leticia
Appeal No. 1998-1660
Application No. 08/108,499
APJ RUGGIERO
APJ DIXON
APJ GROSS
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: December 20, 2001
Draft Final
3 MEM. CONF. Y N
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