Ex Parte Grupp

Board of Patent Appeals and Interferences

Apr 30, 2009

09612607 (B.P.A.I. Apr. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DANIEL E. GRUPP
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Appeal 2009-2613
Application 09/612,607
Technology Center 2800
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Decided:1 April 30, 2009
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Before JAMES D. THOMAS, LEE E. BARRETT, and TERRY J. OWENS,
Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-2613
Application 09/612,607

rejection of claims 23-25, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims a method which, the Appellant states, “relates to
tunneling transistor devices having tunnel junctions” (Spec. 2:5-6).
Claim 23 is illustrative:
23. A method, comprising forming a conduction path between a
pair of tunnel junctions each having a resistance less than or equal to
approximately a quantum resistance by shifting energy states of an island
formed of a material having a non-uniform density of such energy states
characterized by separated conduction and valence bands that behave as
continuous energy bands, the island being disposed between the tunnel
junctions.

The References
Ellenbogen 6,339,227 B1 Jan. 15, 2002
(filed Feb. 1, 1999)
The Rejection
Claims 23-25 stand rejected under 35 U.S.C. § 102(e) over
Ellenbogen.
OPINION
We reverse the Examiner’s rejection.
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that Ellenbogen discloses separated conduction and valence
bands that behave as continuous energy bands?

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Appeal 2009-2613
Application 09/612,607

Findings of Fact
Ellenbogen discloses “a monomolecular transistor and monomolecular
digital logic structures utilizing a molecular transistor to provide switching
and power gain” (col. 1, ll. 6-9). The Examiner relies (Ans. 3-4) upon
Ellenbogen’s Figures 3A to 3D which show donor (115) and acceptor (114)
complexes separated by a central barrier insulator (120) (col. 10, ll. 50-51;
col. 11, ll. 21-22). Ellenbogen discloses (col. 10, l. 66 – col. 11, l. 4):
[A]s illustrated in FIGS. 3C and 3D, the application of a voltage to the
gate contact counteracts the intrinsic bias established by the dopant
substituents. By that action, the valence pi-orbitals 125, 125’ and 126,
126’ are placed in resonance to thereby allow electrons to flow from
the source contact to the drain contact.

Analysis
The Examiner has the initial burden of establishing a prima facie case
of anticipation by pointing out where all of the claim limitations appear in a
single reference. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re
King, 801 F.2d 1324, 1327 (Fed. Cir. 1986).
The Appellant argues that “the molecular island described by
Ellenbogen is not ‘an island formed of a material having a non-uniform
density of energy states characterized by separated conduction and valence
bands that behave as continuous energy bands” (Br. 3).
The Examiner argues that “fig. 3D of Ellenbogen shows that energy
level 125’ and energy level 126’ are at the same level or continuous”
(Ans. 4).
“‘[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.’” In re
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Appeal 2009-2613
Application 09/612,607

Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)).
The Appellant’s Specification discloses (Spec. 13:17-22):
As is known in the art, a spacing between the energy levels 58 is
dependent upon the size of the island 26 and the material comprising
the island. In the present transistor, the island 26 is designed so that
the energy levels 58 are separated in energy by less than about
100 meV, more preferably, less than 50 meV and most preferably less
than 25 meV. This is preferred in the present transistor because it
assures that, at room temperature, the valence and conduction bands
behave as approximately continuous bands.

The Examiner has not established that Ellenbogen’s pi orbitals 125,
125’, 126 and 126’ have energy levels separated by less than about
100 meV, or explained why, absent energy levels having that maximum
separation, those pi orbitals are conduction and valence bands that behave as
continuous energy bands, as the term “continuous energy bands” would have
been most broadly construed by one of ordinary skill in the art in view of the
Appellant’s Specification.
Conclusion of Law
The Appellant has shown reversible error in the Examiner’s
determination that Ellenbogen discloses separated conduction and valence
bands that behave as continuous energy bands.
DECISION/ORDER
The rejection of claims 23-25 under 35 U.S.C. § 102(e) over
Ellenbogen is reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
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Appeal 2009-2613
Application 09/612,607

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