Ex Parte Jenny et al

Board of Patent Appeals and Interferences

Apr 29, 2009

10842749 (B.P.A.I. Apr. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JASON RONALD JENNY,
DAVID PHILLIP MALTA, HUDSON MCDONALD HOBGOOD,
STEPHAN MUELLER, and VALERI F. TSVETKOV
____________

Appeal 2009-2305
Application 10/842,749
Technology Center 1700
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Decided:1 April 29, 2009
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Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

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 2009-2305
Application 10/842,749

Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-5.2 We have jurisdiction under 35 U.S.C. § 6.3
Appellants’ invention relates to a semi-insulating silicon carbide
crystal. Claim 1 is illustrative:
1. A semi-insulating silicon carbide crystal made by the method
of:

heating a silicon carbide crystal having a first concentration of
point defect related deep level states to a temperature above the
temperatures required for CVD growth of silicon carbide from
source gases, but less than the sublimation temperature of silicon
carbide under the ambient conditions to thereby thermodynamically
increase the concentration of point defects and resulting states in the
crystal; and

cooling the heated crystal to approach room temperature at a
sufficiently rapid rate to maintain a concentration of point defects in
the cooled crystal that remains greater than the first concentration.

The Examiner rejected the claims on appeal as follows:
Claims 2 and 3 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
Claims 1-5 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Carter (US. 6,218,680, issued in April 17, 2001).

2 An oral hearing was held for this appeal on April 7, 2009.
3 In rendering this decision, we have considered Appellants’ arguments
presented in the Appeal Brief dated January 26, 2008 and the Reply Brief
dated June 4, 2008.
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Appeal 2009-2305
Application 10/842,749

The §112, second paragraph rejection
The issue presented is: Has the Examiner established that the
subject matter of claims 2 and 3 does not meet the requirements of
35 U.S.C. § 112, second paragraph? We answer this question in the
negative.
The Examiner contends that the claimed subject matter is indefinite
in scope because the term “compensated” as it relates to silicon carbide
crystals is indefinite as recited in claims 2 and 3. (Ans. 4 and 5).
“The legal standard for definiteness [under the second paragraph of
35 U.S.C. § 112] is whether a claim reasonably apprises those of skill in
the art of its scope.” In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir.
1994). The inquiry is to determine whether the claim sets out and
circumscribes a particular area with a reasonable degree of precision and
particularity. The definiteness of the language employed in a claim must
not be analyzed in a vacuum, but rather in light of the teachings of the
particular application. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
After consideration of the present record, we determine that a person
of ordinary skill in the art would have realized the scope of the term
“compensated” as it relates to silicon carbide crystals. Appellants argue
that this rejection is improper and points to the Specification paragraph
[0024] for further explanation of the term. (App. Br. 6-7). The Examiner
has failed to address the Appellants’ citation to the Specification. The
Examiner has not explained why a person of ordinary skill in the art would
not have understood the scope of the term “compensated” after
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Application 10/842,749

consideration of the entire record including the portion specifically
identified by Appellants. The stated rejection is reversed.
The Prior Art Rejection.
We now turn to the prior art rejection. Claims 1-5 stand rejected
under 35 U.S.C. § 102(b) as anticipated by Carter.
The issue before us is whether Appellants have shown that the
Examiner reversibly erred in rejecting the claims under 35 U.S.C. § 102(b).
The issue turns on whether the Examiner has made out a prima facie case
sufficient to shift the burden of proof to Appellants to show that Carter
does not describe, either explicitly or inherently, a semi-insulating silicon
carbide crystal with the electronic characteristics of the claimed invention.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter is not patentable within the meaning of
§ 102 in view of the applied prior art. Accordingly, we will sustain the
Examiner’s rejection.4
FINDINGS OF FACT

The Examiner finds that Carter describes semi-insulating silicon
carbide crystals with electronic characteristics. (Ans. 4-5; Carter, col. 3, ll.
4-14). The Examiner also finds that Carter describes the formation of
semi-insulating silicon carbide crystal that meets the claimed invention.
(Ans. 5).

4 Appellants have not presented separate arguments directed to any
specific claim. We select independent claim 1 as representative of the
rejected subject matter.
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Appeal 2009-2305
Application 10/842,749

PRINCIPLES OF LAW
Anticipation under 35 U.S.C. § 102 requires that a prior art reference
sufficiently describe the claimed invention to have placed the invention in
the possession of the public. See Minnesota Mining & Mfg. Co. v. Johnson
& Johnson Orthopaedics, Inc., 976 F.2d 1559, 1572 (Fed. Cir. 1992).
Where the Examiner establishes a reasonable belief that the
property or characteristic recited in the claims would have been inherent to
the product or process, the burden of proof shifts to Appellants to show
that this characteristic or property is not possessed by the prior art. See In
re Best, 562 F.2d 1252, 1254-55 (CCPA 1977); In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990).
ANALYSIS
Appellants aver that “the electronic characteristics of the claimed
product by process crystal[s] are distinctly and objectively different from
those of the starting materials, that the distinct difference has been
demonstrated in the application as filed, and that the Examiner's
anticipation rejection based on the starting material is accordingly
inappropriate.” (App. Br. 5). Appellants further contend that the
Specification and drawings provide evidence of the differences between
the starting materials and the product obtained by the recited process of the
claimed invention. (Reply Br. 2).
Appellants’ arguments are not persuasive. Appellants contend that
the claimed product has different characteristics than the starting material.
However, Appellants have not asserted that the referenced starting material
is the same as the semi-insulating silicon carbide crystals of Carter.
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Appeal 2009-2305
Application 10/842,749

Further, it is noted that the claimed invention does not provide a
description of specific electronic characteristics that distinguish the
claimed invention from the starting materials or the invention of Carter.
Appellants have not directed us to objective evidence that establishes that
Carter does not describe semi-insulating silicon carbide crystals with
electronic characteristics as required by the claimed invention.
Appellants’ reference to Figure 3 of the Specification is insufficient
to overcome the stated rejection. Appellants contend that Figure 3
provides a distinction between the starting materials and the semi-
insulating silicon carbide crystals produced by the process specified by the
claimed invention. However, Appellants have not asserted that the starting
material of Figure 3 is the same as the starting material of Carter or the
product produced by Carter. Where the Examiner establishes a reasonable
belief that the property or characteristic of the claimed invention would
have been inherent to the product of the prior art, the burden of proof shifts
to Appellants to show that this characteristic or property is not possessed
by the prior art. See In re Best, In re Spada, supra.
Appellants have failed to direct us to evidence sufficient to refute the
Examiner’s finding that the semi-insulating silicon carbide crystals of
Carter are the same as the claimed invention. Instead, Appellants provide
unsupported attorney argument. An attorney’s argument is no substitute
for objective evidence against the Examiner’s finding. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974). Further, it has not escaped our attention
that Appellants’ application and the Carter reference have common
inventors and the same assignee. Manifestly, no one is in better position
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Application 10/842,749

than Appellants to clarify on this record the electronic characteristics that
allegedly distinguish the claimed invention from the semi-insulating
silicon carbide crystals of Carter.

ORDER
The decision of the Examiner rejecting claims 2 and 3 under 35
U.S.C. § 112, second paragraph, is reversed
The decision of the Examiner rejecting claims 1-5 under 35 U.S.C.
§ 102(b) 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)(v).

AFFIRMED

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