Ex Parte Fukuro et al

Board of Patent Appeals and Interferences

Sep 28, 2011

11533370 (B.P.A.I. Sep. 28, 2011)

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.
11/533,370 09/20/2006 Taketo FUKURO OKI 511 4304
23995 7590 09/28/2011
RABIN & Berdo, PC
1101 14TH STREET, NW
SUITE 500
WASHINGTON, DC 20005
EXAMINER
TAYLOR, EARL N
ART UNIT PAPER NUMBER
2818
MAIL DATE DELIVERY MODE
09/28/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAKETO FUKURO and MASAO OKIHARA
____________

Appeal 2010-000288
Application 11/533,370
Technology Center 2800
____________

Before CARLA M. KRIVAK, CARL W. WHITEHEAD, JR., and
BRADLEY W. BAUMEISTER Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000288
Application 11/533,370
2
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 2, and 4-12. Appeal Brief 4. We have jurisdiction under 35
U.S.C. § 6(b) (2002). We affirm.

Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
1. A semiconductor device comprising:
a substrate;
a first oxide film lying on the substrate;
a thin semiconductor film lying on the first oxide film;
[sic] transistor formed on the semiconductor film, the transistor having
source, drain, and gate terminals; and
a protective diode formed on the semiconductor film and electrically
connected between the source and gate terminals in a forward direction.

Rejections on Appeal
Claims 1, 2, 4-9, and 12 stand rejected under 35 U.S.C. §102(e) as
being anticipated by Minami (U.S. Patent Application Publication
2005/0269642 A1). Answer 3-10.
Claims 1, 10, and 11 stand rejected under 35 U.S.C. §102(b) as being
anticipated by Asai (U.S. Patent Number 5,610,426). Answer 10-12.

Issue on Appeal
Did the Examiner err in rejecting claims 1, 2, and 4-12 over the
various 35 U.S.C. 102 rejections?
Appeal 2009-000288
Application 11/533,370
3
ANALYSIS
Claims 1, 2, 4-9, and 12
Appellants contend claim 1 recites “a protective diode formed on the
semiconductor film and electrically connected between the source and gate
terminals in a forward direction.” Appeal Brief 5. Appellants argue the
Examiner’s interpretation of Minami’s invention is incorrect because
Minami discloses a protective diode connected to a gate region instead of a
source region as claimed. Id. “The [e]xaminer takes the position that there
is no structural difference between a “source” or “drain” region.” Answer
12.
Appellants argue “an ordinary killed [sic] person would likely have
concluded that switching the polarities of the potential supplied to Minami’s
region [sic] 31 and 33 would undermine the operation of Minami’s
protective diode 61.” Appeal Brief 6. We do not find the Appellants’
arguments persuasive because the polarities of the source and drain are one
and the same. See Minami, Figure 2. The terms “source” and “drain”
describe the function or manner in which the transistor regions are to be
utilized, and claim 1 does not specify any potentials supplied to Minami’s
regions 31 and 33. As such, the claim does not distinguish over the structure
of Minami’s invention, and Appellants’ arguments are not commensurate
with the scope of the claim. Therefore we are sustaining the Examiner’s
rejection of claim 1.
For the above reasons, we are also sustaining the rejections of
dependent claims 2, 4-9, and 12, whose merits are not separately argued.
In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).

Appeal 2009-000288
Application 11/533,370
4
Claims 1, 10, and 11
Appellants contend, “But although the gate electrode of Asai’s
transistor 11 is connected to the drain as to simulate the operation of a diode,
Asai’s transistor 11 is still a transistor.” Appeal Brief 7. Appellants
conclude that since claim 1 recites a diode, Asai does not anticipate the
claimed invention. Id. We do not find the Appellants’ arguments to be
persuasive because Appellants have not provided evidence that the claims
preclude a transistor simulating the operation of a diode. Therefore we are
sustaining the Examiner’s rejection of claim 1.
For the above reasons, we are also sustain the rejections of dependent
claims 10 and 11, whose merits are not separately argued. In re Nielson, 816
F.2d at 1572.

DECISION
We affirm the Examiner’s decision rejecting claims 1, 2, and 4-12
under 35 U.S.C. §102.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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