Ex Parte Inbe

Board of Patent Appeals and Interferences

Apr 11, 2005

09960356 (B.P.A.I. Apr. 11, 2005)

The opinion in support of the decision being entered
today was not written for publication and is not binding
precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TAKASHI INBE
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Appeal No. 2005-0821
Application No. 09/960,356
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ON BRIEF
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Before GARRIS, WALTZ, and TIMM, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
refusal to allow claims 3 and 5 as amended subsequent to the
final rejection (see the amendment dated Dec. 9, 2003, entered as
per the Advisory Action dated Jan. 29, 2004; Brief, page 2, ¶IV;
Answer, page 2, ¶(4)). Claim 4 is the only other claim pending
in this application and stands allowed by the examiner (Brief,
page 2, ¶III; Answer, page 1, ¶(3)). We have jurisdiction
pursuant to 35 U.S.C. § 134.
According to appellant, the invention is directed to a
semiconductor device for detecting neutrons comprising a
Appeal No. 2005-0821
Application No. 09/960,356
2
semiconductor substrate, a boron containing layer formed on the
substrate containing the isotope 10B, a PN junction formed on the
surface of the substrate below the boron containing layer, and
where electron-positive hole pairs are generated in a depletion
layer of the PN junction by " rays generated by a reaction
between the neutrons and the isotope 10B (Brief, page 2). The
neutrons are detected on the basis of the quantity of the
electron-positive hole pairs, and the semiconductor device
further comprises an analyzing circuit portion on the
semiconductor substrate in a region other than the region where
the neutrons are detected, including an amplifier circuit and a
single channel height analyzer circuit (Brief, page 3).
Representative independent claim 3 is reproduced below:
3. A semiconductor device for detecting neutrons
comprising:
a semiconductor substrate;
a boron containing layer containing isotope 10B, the layer
being formed on said semiconductor substrate;
a PN junction formed on a surface area of said semiconductor
substrate below said boron containing layer; wherein
electron - positive hole pairs are generated in a depletion
layer of said PN junction by " rays generated by a reaction
between said neutrons and said isotope 10B, and the neutrons are
detected on the basis of the quantity of electric charge of the
electron - positive hole pairs; and
an analyzing circuit portion, which includes an amplifier
circuit for amplifying a signal and a single channel height
analyzer circuit for selecting only a pulse with a particular
height to estimate an energy spectrum of the " rays with the aid
of counting or by measuring peak height distribution using a
Appeal No. 2005-0821
Application No. 09/960,356
3
current flowing through said PN junction, on said semiconductor
substrate in a region other than the region where said neutrons
are detected.
Claims 3 and 5 stand rejected under 35 U.S.C. § 112, first
paragraph, for lack of enabling disclosure (Answer, page 3) and
under the second paragraph since the scope of the claims is
“unclear” (id.). We reverse both grounds of rejection on appeal
essentially for the reasons stated in the Brief, Reply Brief, and
those reasons set forth below.
OPINION
A. The Rejection under § 112, ¶2
A proper analysis of the claim language requires
ascertaining if the claims are definite under the second
paragraph of section 112 before an analysis of the claims under
the first paragraph of section 112 can be undertaken. See In re
Angstadt, 537 F.2d 498, 501, 190 USPQ 214, 217 (CCPA 1976).
The initial burden of establishing unpatentability, on any
ground, rests with the examiner. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). “The legal
standard for definiteness is whether a claim reasonably apprises
those of skill in the art of its scope. [Citations omitted].” In
re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir.
Appeal No. 2005-0821
Application No. 09/960,356
4
1994). If one skilled in the art would understand the bounds of
the claim when read in light of the specification, then the claim
satisfies section 112 paragraph two. See Miles Labs., Inc. v.
Shandon, Inc., 997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed. Cir.
1993). The definiteness of the claim language employed must be
analyzed, not in a vacuum, but always in light of the teachings
of the prior art and the disclosure of the particular
specification as it would be interpreted by one possessing
ordinary skill in the art. See In re Angstadt, supra.
The examiner states that the word “pulse” is unclear because
it is not known whether this word refers to current or voltage
pulses (Answer, page 3). The examiner also argues that it is
improper to read a limitation from the specification into a claim
(id.). However, as discussed above, a proper analysis under
section 112, second paragraph, does not require reading a
limitation from the specification into the claim but interpreting
the claimed language in light of the specification as it would
have been understood by one of ordinary skill in the art. Here
the specification clearly teaches that the “pulsation of a
current” flowing through the PN junction is measured by the
analyzing circuit, and therefore one of ordinary skill in this
art would have been apprised that the scope of the word “pulse”
Appeal No. 2005-0821
Application No. 09/960,356
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refers to current (see the specification, page 6, ll. 9-13,
italics added; Brief, page 4; and Reply Brief, pages 1-2).
The examiner also finds that the scope of the “single
channel height analyzer circuit ... through said PN junction” is
unclear (Answer, page 3). The only supporting statement
presented by the examiner is that it is unclear how “selecting
only a pulse with a particular height” is related to the
“counting” or the “measuring peak height distribution” (id.). We
determine that the examiner has not met the initial burden of
establishing why this claim language is “unclear” or indefinite,
i.e., the examiner has not presented any cogent reasoning why one
of ordinary skill in this art would not have been apprised of the
scope of the contested language. See the specification, page 3,
ll. 21-28, and page 6, ll. 2-15. Although the examiner contests
the “enabling disclosure” for the single channel height analyzer
circuit (see the rejection infra), that fact does not render the
claim imprecise or indefinite. See In re Ehrreich, 590 F.2d 902,
906-07, 200 USPQ 504, 508 (CCPA 1979).
For the foregoing reasons and those stated in the Brief and
Reply Brief, we cannot sustain the examiner’s rejection of claims
3 and 5 under the second paragraph of 35 U.S.C. § 112.
Appeal No. 2005-0821
Application No. 09/960,356
1In re Wands, 858 F.2d 731, 735-37, 8 USPQ2d 1400, 1402-04
(Fed. Cir. 1988).
6
B. The Rejection under § 112, ¶1
As previously discussed, the initial burden of proof rests
with the examiner to establish a lack of enabling disclosure (or
that undue experimentation is required to practice the claimed
invention). See In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d
1510, 1513 (Fed. Cir. 1993).
The examiner merely states that the disclosure at page 3,
ll. 21-28, and page 6, ll. 2-17, does not enable any person
skilled in the art to make the “single channel height analyzer
circuit” (Answer, page 3). As correctly argued by appellant
(Brief, pages 5-6; Reply Brief, page 3), the examiner has not met
the initial burden of proof. Although the Wands factors1 are not
mandatory but merely illustrative, the lack of enablement depends
on an analysis of several factual inquiries. See Amgen Inc. v.
Chugai Pharmaceutical Co., 927 F.2d 1200, 1213, 18 USPQ2d 1016,
1027 (Fed. Cir. 1991). Here the examiner has not made any
underlying factual inquiries, other than to conclude that the
breadth and nature of the invention is “unclear” (Answer, page
4). The examiner should have determined, inter alia, what was
well known in the art, since well known subject matter need not
Appeal No. 2005-0821
Application No. 09/960,356
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be described in the specification. See In re Buchner, 929 F.2d
660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991). Thus the
examiner should have determined whether the “fundamental”
circuits for the analysis circuit portion 1B disclosed by
appellant (specification, page 3, ll. 21-28) were well known in
this art, or could have been practiced by one of ordinary skill
in this art with only routine experimentation. In the absence of
any underlying factual inquiries, we cannot sustain a rejection
for lack of enabling disclosure.
For the foregoing reasons and those stated in the Brief and
Reply Brief, we determine that the examiner has not met the
initial burden of proof in establishing failure to meet the “how
to make and use” (enablement) requirement of section 112, first
paragraph. Therefore we reverse the examiner’s rejection of
claims 3 and 5 under 35 U.S.C. § 112, first paragraph.
C. Summary
The rejection of claims 3 and 5 for failing to fulfill the
requirements of the first paragraph of 35 U.S.C. § 112 is
reversed. The rejection of claims 3 and 5 for failing to meet
the requirements of the second paragraph of 35 U.S.C. § 112 is
also reversed.
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Application No. 09/960,356
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The decision of the examiner is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
TAW/jrg
Appeal No. 2005-0821
Application No. 09/960,356
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