Ex parte Ishibashi

Board of Patent Appeals and Interferences

Apr 27, 1998

08011202 (B.P.A.I. Apr. 27, 1998)

Application for patent filed January 29, 1993.1
1
Paper No. 22
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte AKIRA ISHIBASHI,
DAVID G. RAVENHALL,
ROY L. SCHULT AND
HENRY W. WYLD
______________
Appeal No. 96-2528
Application 08/011,2021
_______________
ON BRIEF
_______________
Before THOMAS, HAIRSTON, and FLEMING, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Appeal No. 96-2528
Application 08/011,202
2
Appellants have appealed to the Board from the examiner’s
final rejection of claims 1-4. Claims 5-7 have been made
subject to a restriction requirement.
Representative claim 1 is reproduced below:
1. A semiconductor device exploiting a multiply connected
quantum interference effect comprising:
(a) a semiconductor body;
(b) n - 1 (n $ 3) rods of forbidden regions extending
along one direction in said semiconductor body;
(c) a single continuous channel region consisting of
a plurality of contiguous elemental channel regions, said
forbidden regions being provided to divide said channel region
into said plurality of elemental channel regions, each of said
elemental channel regions forming a continuous closed circuit
and surrounding each of said forbidden regions, said channel
regions being multiply connected with multiplicity of n and
having (n - 1)-fold rotational symmetry around said one
direction;
(d) a gate electrode surrounding plural side walls of
said channel region; and
(e) source and drain electrodes electrically connected to
one and another end of said channel region along said one
direction.
The following references are relied on by the examiner:
Abrokwah 4,729,000 Mar. 1,
1988
Appeal No. 96-2528
Application 08/011,202
Our understanding of this reference is based upon by a translation2
provided by the Scientific and Technical Information Center of the Patent and
Trademark Office. A copy of the translation is enclosed with this decision.
3
Yamada (Japanese Koaki) 1-225 1752
Sept. 8, 1989
Onda et al. (Onda), “Striped Channel Field Effect Transistors
With A Modulation Doped Structure”, IEDM-89, pp. 125-128 (Dec.
1989).
Claims 1-4 stand provisionally rejected under the
judicially created doctrine of obviousness-type double
patenting as being unpatentable over a copending application.
Claims 1-4 also stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Finally, claims 1-4 stand
rejected under 35 U.S.C.
§ 103. As evidence of obviousness, the examiner relies upon
Yamada in view of Onda as to claims 1-3, with the addition of
Abrokwah as to claim 4.
Rather than repeat the positions of the appellants and
the examiner, reference is made to the briefs and the answer
for the respective details thereof.
OPINION
Appeal No. 96-2528
Application 08/011,202
4
Turning initially to the obviousness double patenting
rejection, the examiner correctly points out at the top of
page
2 of the answer that appellants’ brief does not contest this
rejection. This observation has been confirmed at page 1 of
the reply brief where appellants have indicated that the
obviousness-
type double patenting rejection has not been argued. In
considering the statements made at page 1 of the reply brief,
appellants do not contest in any manner the propriety of the
rejection. The apparent basis of that position is that there
are no allowed claims in the referenced application. This
view is misplaced since the rejection is a provisional
rejection as stated by the examiner. The essential position
as set forth by the examiner of page 7 of the answer, that the
claims are not patentably distinct, has gone unrebutted by
appellants in the brief and reply brief. Therefore, we
sustain the rejection. Note also Ex parte Karol, 8 USPQ2d
1771, 1773-74 (Bd. Pat. App. & Inter. 1988).
Turning next to the rejection of claims 1-4 under the
second paragraph of 35 U.S.C. § 112, we will sustain this
Appeal No. 96-2528
Application 08/011,202
5
rejection essentially for some reasons set forth by the
examiner at pages 3-5 and 8 and 9 of the answer.
It is to be noted that to comply with the requirements of
the cited paragraph, a claim must set out and circumscribe a
particular area with a reasonable degree of precision and
particularity when read in light of the disclosure and the
teachings of the prior art as it would be by the artisan.
Note In re Johnson, 558 F.2d 1008, 1016, 194 USPQ 187, 194
(CCPA 1977); In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236,
238 (CCPA 1971).
Appeal No. 96-2528
Application 08/011,202
6
Although we agree in principle with the basic positions
set forth by appellants at page 6 of the brief that some of
the examiner’s reasoning appears to do violence to the plain
language of the claims especially interpreted in light of the
specification, this is not dispositive.
The bulk of claim 1 is consistent with the recitation at
the latter half of page 2 of the specification as filed and
the first line of page 3, which portion is the summary of the
invention in the specification, as well as the discussion
beginning at the bottom of page 5 through page 8. The
specification, however, confirms some of the concerns raised
by the examiner as well
as controverts an assertion made by appellants at page 6 of
the brief.
On its face, reading claim 1 alone, it would appear that
the language at line 11 of the claim 1 reproduced in the brief
relating to “said channel regions” at the end of that line
should have been more accurately stated to say “said elemental
channel regions” since there are plural regions recited.
However, according to the disclosure it is not the elemental
channel
Appeal No. 96-2528
Application 08/011,202
7
regions disclosed which have been characterized as being
multiply connected with multiplicity of n and having a (n-1)-
fold rotational symmetry around a previously recited one
direction. It is, according to the disclosure, proper to
interpret the language at the end of line 11 of claim 12
reciting “said channel regions” as “said channel region.” It
is the channel region 1 according to Figures 1 and 2 and
specification, page 2, lines
21-23 and page 7, lines 10-12 which has the recited
properties. The amendment filed on December 27, 1994
introduces the plural version of region by adding “s” to the
word region compared with the originally filed version of
claim 1. Thus, it appears that the present version of claim 1
is misdescriptive on its face.
The examiner also properly raises questions with respect
to the language of the channel region being multiply connected
with a multiplicity of n. The specification does not aid in
understanding what the value or numeric value of n may be even
though it is associated with the channel region 1 having two
properties. Even though the claim may be interpreted to
properly reflect the two properties associated with channel
Appeal No. 96-2528
Application 08/011,202
8
region 1, what the meaning of a multiplicity of n has in the
context of a structural or functional distinction is not fully
explained in the specification as filed.
Appellants’ position at page 6 of the brief indicates
that they consider the elemental channel regions to be regions
A-I shown in Figure 2. The specification does not so indicate
that these regions labeled A-I are elemental channel regions.
They are only described as being nine bound states according
to the discussion beginning at page 8, line 6 of the
specification. A viewer’s characterization of the claimed
elemental channel regions conforms to ABFC; ABIE; ADGC and
ADHE, but the specification does not discuss the claimed
elemental channel regions in this manner. In any event, this
characterization meets the claim limitation of each of the
elemental channel regions surrounding each of the forbidden
regions 2 in Figure 2. In any event, since these noted
ambiguities have not been cured by any feature recited in
dependent claims 2-4, they are correctly included in this
rejection. As such, the examiner’s rejection of claims 1-4
under 35 U.S.C. § 112, second paragraph, is affirmed.
Turning lastly to the rejection of claims 1-4 under
Appeal No. 96-2528
Application 08/011,202
9
35 U.S.C. § 103, we will sustain each of the two rejections
set forth by the examiner, one for claims 1-3 and the other
for claim 4, for the reasons set forth by the examiner in the
statement of the rejection portion of the answer at pages 5-7
as well as the additional responsive arguments portion of the
examiner at pages 9-11.
As to the appellants’ position at page 4 of the brief
that the structure of claim 1 relating to the gate electrode
surrounding the sidewalls of the channel not being met has
been addressed by the examiner at pages 9 and 20 of the
answer. There, the examiner correctly points out that the
claim does not require that the gate electrode completely
surround the sidewalls of the channel region even though the
Figure 2 depiction of the disclosed invention does so. In any
event, we agree with the examiner’s view that it was commonly
known for better control of the channel current to do so,
which position is not challenged by appellants. Furthermore,
in light of Onda’s teachings, we are also persuaded of the
obviousness of this feature since Onda teaches of enhancing
the transconductance striped channel FET heterostructure
device by so constructing his FET as to increase two
Appeal No. 96-2528
Application 08/011,202
10
dimensional squeezing of the conducting channel by applying
correct gate voltage. Onda’s teachings in effect confirm the
examiner’s reasoning at the top of page 10 of the answer
irrespective of the position of the examiner that it was
commonly known in the art to surround a channel region with a
gate electrode to enhance or increase control of the channel
current.
Appeal No. 96-2528
Application 08/011,202
11
As to the argument presented at the middle of page 4 of
the brief, the examiner’s statement of the rejection of claim
1 at pages 5 and 6 of the answer correlates Yamada’s teachings
to the claimed forbidden regions in the channel region. As to
the two-dimensional verses three-dimensional argument at the
bottom of page 4 of the brief, we are in agreement with the
examiner’s position set forth at the middle of page 10 of the
answer. It appears that the three-dimensional characteristics
of Yamada relate to this argument as confirmed by the Figure 1
(a) top view showing taken with the Figure 1 (b) cross-
sectional view of Onda’s striped channel FET at page 125 of
his article.
The examiner’s position at page 11 of the answer
addresses the features of dependent claim 2 and meets
appellants’ arguments at the bottom of page 5 of the brief.
Although the specific recitation of the composition of the
forbidden regions in claim 3 is expressed at the bottom of
page 5 of the brief, they have not been apparently directly
addressed by the examiner. We note that the Yamada’s
disclosure teaches in terms of plural different “types” of
semiconductor material relating to the expressly identified
Appeal No. 96-2528
Application 08/011,202
12
GaAS material region as well as the AlGaAs regions.
Conventionally, in the art semiconductor materials are
described as being of “p” or “n” “type” of material. Without
expressing
that per se, it is believed that the artisan would have
understood two different types of these materials to have been
utilized to enable the localization discussed in Yamada.
Finally, as to claim 4, we are in agreement with the
examiner’s reasoning set forth in the answer. It is true that
neither Yamada nor Onda appears to specifically identify the
material utilized for the gate electrode in each reference.
The title and abstract of Abrokwah, in addition to the columns
6 and 7 portions identified by the examiner of this reference,
confirm that it was well known in the art that heterostructure
devices of the type set forth by Yamada and Onda would have
utilized an appropriate type of InGaAs as set forth in
dependent claim 4 on appeal.
In view of the foregoing, we have sustained each of the
rejections set forth by the examiner of claims 1-4 on appeal.
Therefore, the decision of the examiner is affirmed.
Appeal No. 96-2528
Application 08/011,202
13
Appeal No. 96-2528
Application 08/011,202
14
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
KENNETH W. HAIRSTON ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )

Appeal No. 96-2528
Application 08/011,202
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Appeal No. 96-2528
Application 08/011,202
16