Ex Parte Gan et al

Board of Patent Appeals and Interferences

Dec 13, 2010

11143405 (B.P.A.I. Dec. 13, 2010)

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.
11/143,405 06/02/2005 Feng-Yuan Gan 250122-2720 8686
24504 7590 12/14/2010
THOMAS, KAYDEN, HORSTEMEYER & RISLEY, LLP
600 GALLERIA PARKWAY, S.E.
STE 1500
ATLANTA, GA 30339-5994
EXAMINER
HU, SHOUXIANG
ART UNIT PAPER NUMBER
2811
MAIL DATE DELIVERY MODE
12/14/2010 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 FENG-YUAN GAN and HAN-TU LIN
________________

Appeal 2009-010151
Application 11/143,405
Technology Center 2800
________________

Before RICHARD E. SCHAFER, ROBERT E. NAPPI, and BRADLEY W.
BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-010151
Application 11/143,405

STATEMENT OF CASE
Summary
Claims 1 and 4-6 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Fukuchi (US 2007/0057258 A1; PCT filed Nov. 5, 2004).
Appellants appeal under 35 U.S.C. § 134(a) from this rejection.2
We affirm.
Background
Appellants’ claimed invention relates “to gate structures of thin film
transistors” (or TFTs) (Spec. 1). More specifically, conventional TFTs were
known to suffer from their copper gate lines peeling away from the
underlying glass substrate (id.). Appellants’ invention overcomes this
problem by providing a first vanadium oxide layer that serves as an adhesion
layer between the glass substrate and the overlying copper gate (Spec. 2-3).
Independent claim 1 is representative,3 reading as follows:
1. A thin film transistor (TFT), comprising:
a substrate;
a first vanadium oxide layer formed on the substrate;
a gate formed on the first vanadium oxide layer;
a gate-insulating layer formed on the gate;
a semiconductor layer formed on a portion of the gate-
insulating layer; and
a source and a drain formed on a portion of the
semiconductor layer.

2 Claims 2, 3, and 7-11 stand withdrawn from consideration, and claims 12-
20 have been canceled (see App. Br. 2).
3 Appellants argue claims 1 and 4-6 together as a single group. See App. Br.
4-6. Accordingly, we select independent claim 1 as representative. See 37
C.F.R. § 41.37(c)(1)(vii).
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Appeal 2009-010151
Application 11/143,405

ANALYSIS
I.
Appellants contend that Fukuchi does not anticipate the appealed
claims because Fukuchi fails to disclose a vanadium oxide layer formed on
the substrate (App. Br. 4-6). More specifically, Appellants make the
following admission:
In paragraph [0074], Fukuchi relevantly discloses:
An adhesion improving layer 201 formed of a metal material
such as Ti (titanium), W (tungsten), Cr (chrome), Al (aluminum),
Ta (tantalum), Ni (nickel), Zr (zirconium), Hf (hafnium), V
(vanadium), Ir (iridium), Nb (niobium), Pd (palladium), Pt
(platinum), Mo (molybdenum), Co (cobalt), or Rh (rhodium), or
an oxide thereof (TiOx etc.) is preferably formed on the substrate
100 by a method such as sputtering or vapor deposition (FIG.
4A).
(App. Br. 5). But Appellants nonetheless argue that “the overly broad
disclosure of Fukuchi[ ] should not prevent the patenting of the more
particular implementation defined in the pending claims” (App. Br. 6).
This argument is not persuasive. The present appeal is not a situation
where we must decide whether an undisclosed species is obvious in light of
a disclosed genus. Instead, the claims stand rejected as anticipated by
Fukuchi, and paragraph [0074] of Fukuchi expressly discloses the claimed
species.
II.
Appellants additionally filed a declaration under 37 C.F.R. § 1.131 for
the purpose of showing that they had reduced the present invention to
practice by April 13, 2004, prior to the Fukuchi’s effective filing date of
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Appeal 2009-010151
Application 11/143,405

November 05, 2004 (Declaration of Prior Invention 1-2; filed Feb. 23,
2008). The Examiner states that the § 131 declaration has been considered
but finds the declaration to be ineffective because “the claimed invention of
the instant application is an obvious variant of what is claimed in the
Fukuchi reference and/or is obvious in view of the subject matter recited in
[claims 2, 9, 16 and/or 23 of Fukuchi],” and in such cases, a § 131
declaration is inappropriate (Ans. 4-7).
Appellants, in turn, argue that the Examiner erred in finding the § 131
declaration ineffective because the present claims are not the same as
Fukuchi’s claims (App. Br. 3-4; emphasis added). More specifically,
Appellants argue that the respective claims are not directed to the same
invention because Fukuchi’s claims do not recite a first vanadium oxide
layer formed on the substrate (App. Br. 4).
The question before this appeals tribunal, though, is not whether the
present claims are the same as, or obvious variants of, Fukuchi’s claims.
Even though the Examiner states that the § 131 declaration has been
considered (Ans. 4), other statements (Ans. 4-7) conversely indicate that the
Examiner has merely recognized that the declaration has been filed without
actually considering the declaration’s content. That is, the Examiner found
the declaration ineffective only because the Examiner refused to consider the
declaration – not because of any alleged deficiency of information contained
within the § 131 declaration.
As such, the Examiner's refusal to consider the § 131 declaration is a
petitionable matter, which we do not have authority to consider. See Ex
parte Searles, Jr., 422 F.2d 431, 435 (CCPA 1970) (holding that “an
examiner’s refusal to . . . consider an affidavit under Rule [1.]131, which
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Appeal 2009-010151
Application 11/143,405

might also clearly be ‘determinative of the rejection’ is reviewable only be
petition and will not be considered by the Board of Appeals.” See, also,
M.P.E.P. § 715.08 (setting forth that the “[r]eview of questions of formal
sufficiency and propriety [of affidavits under 37 C.F.R. § 1.131] are by
petition filed under 37 C.F.R. § 1.181. Such petitions are answered by the
Technology Center Directors (M.P.E.P. § 1002.02(c)[3(d)]).”)
Appellants have not petitioned the Examiner’s refusal to consider the
§ 131 declaration, though, so we will not consider the information contained
within the petition. For the foregoing reasons, then, Appellants have not
persuaded us that the Examiner erred in holding that Fukuchi anticipates
Appellants’ claims. Accordingly, we will sustain the Examiner’s rejection
of representative claim 1, as well as dependent claims 4-6, which are
grouped with claim 1.

DECISION
The Examiner’s decision rejecting claims 1 and 4-6 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

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Appeal 2009-010151
Application 11/143,405

AFFIRMED

ELD
THOMAS, KAYDEN, HORSTEMEYER & RISLEY, LLP
600 GALLERIA PARKWAY, S.E.
STE 1500
ATLANTA, GA 30339-5994
6