Ex parte Jimenez et al.

Board of Patent Appeals and Interferences

Feb 25, 2000

08496849 (B.P.A.I. Feb. 25, 2000)

1
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not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JORGE R. JIMENEZ
PAUL W. PELLEGRINI
_____________
Appeal No. 1997-2691
Application 08/496,849
______________
ON BRIEF
_______________
Before FLEMING, RUGGIERO, and FRAHM, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 7, all the claims pending in the application.
The invention relates to a schottky diode infrared
detector with a voltage tunable cutoff wavelength. Appellants
disclose on page 2 of the specification that their invention
is a schottky
Appeal No. 1997-2691
Application 08/496,849
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diode infrared detector with a voltage tunable cutoff
wavelength which is obtained by inserting a SiGe layer between
the metal silicide and the Si substrate. Appellants disclose
on page 5 of the specification that Fig. 1 shows the current
state of the art for metal photoemissive devices which do not
have a SiGe layer between the metal silicide and the Si
substrate. Appellants disclose on page 8 of the specification
that Fig. 3 shows the Appellants' invention having the SiGe
layer between the metal silicide and the Si substrate.
Independent claim 1 presented in the application is
reproducted as follows:
1. A Schottky barrier infrared photovoltaic detector;
which outputs a detection signal which is adjusted by an
externally applied voltage and which comprising:
a silicon substrate having a first and second surface;
a silicide layer placed on the first surface of the
silicon substrate to form a detector which has a barrier
height and which operates in an infrared portion of an
electromagnetic spectrum by internal photoemission of holes
over an electrical barrier, said detector outputting said
detection signal in response to said internal photoemission;
a guard ring implanted in said silicon substrate, said
guard ring surrounding the periphery of said silicide layer to
block surface currents formed on said substrate and to
eliminate edge effects;
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Application 08/496,849
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a SiGe intermediate layer which is grown on the said
first surface of the said silicon substrate before the growth
of the silicide layer, said SiGe intermediate layer producing
an interface with a valance band offset that serves as an
additional barrier to photoemitted carriers to enhance thereby
a voltage tunable cutoff of said electrical barrier in
response to the externally applied voltage; and
first and second contact means for making ohmic contact
with said silicide layer and with said silicon substrate
respectively, said first and second contact means conducing
said externally applied voltage to said detector and
outputting said detection signal.
The references relied on by the Examiner are follows:
Yamaka et al. (Yamaka) 4,939,561 July 3,
1990
Pellegrini 5,163,179 Nov. 10,
1992
Claims 1 through 7 stand rejected under 35 U.S.C. § 103
as being unpatentable over Yamaka and Pellegrini.
Rather than repeat the arguments of the Appellants or the
Examiner, we make reference to the brief and the answer for
the details thereof.
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Application 08/496,849
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OPINION
After a careful review of the evidence before us, we
agree with the Examiner that claims 1 and 3 are properly
rejected under 35 U.S.C. § 103. Thus, we will sustain the
rejection of these claims but we will reverse the rejection of
claims 2 and 4 through 7.
On page 3 of the brief, Appellants argue that Yamaka
fails to provide a tunability of wavelength sensibility during
operation. The Examiner responds on page 10 of the answer
that the claim does not require tunability of wavelength
sensibility during operation, because the claim is setting
forth a structure which is shown to have been met by the
combination of Yamaka and Pellegrini.
As pointed out by the our reviewing court, we must first
determine the scope of the claim. "[T]he name of the game is
the claim." In re Hinkiker Co., 150 F.3d 1362, 1369, 47
USPQ2d 1523, 1529 (Fed. Cir. 1998). Claims will be given
their broadest reasonable interpretation consistent with the
specification, and limitations appearing in the specification
are not to be read into the claims. In re Etter, 756 F.2d
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Application 08/496,849
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852, 858, 225 USPQ 1, 5 (Fed. Cir. 1985).
Turning to claim 1, we find that the Appellants' claim 1
argue is setting forth a Schottky barrier infrared
photovoltaic detector. Furthermore, we note that Appellants'
claim 1 does not recite a method for operation of the Schottky
barrier infrared photovoltaic detector. In addition, we find
that the claim does not set forth structure that requires
Applicants' argued tunability of wavelength sensibility during
operation. Therefore, we fail to find that the Examiner has
erred in finding that the combination of Yamaka and Pellegrini
in combination meets the Appellants' claim structure.
Appellants argue that there is no basis in the art of
record for combining Yamaka and Pellegrini as proposed by the
Examiner. In particular, Appellants argue that the
combination is improper because neither of these references
recognizes the problem solved by the present invention.
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
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Application 08/496,849
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re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). The Federal Circuit
reasons in Para-Ordnace Mfg. Inc. v. SGS Importers Int'l Inc.,
73 F.3d 1085, 1088-89, 37 USPQ2d 1237, 1239-40 (Fed. Cir.
1995), cert. denied, 519 U.S. 822 (1996), that for the
determination of obviousness, the court must answer whether
one of ordinary skill in the art who sets out to solve the
problem and who had before him in his workshop the prior art,
would have been reasonably expected to use the solution that
is claimed by the Appellants. However, it is not required
that the Examiner shows that the motivation to make the
modification is the same motivation as that of the Appellants'
motivation. In In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d
1309, 1311 (Fed. Cir. 1996), citing In re Dillon, 919 F.2d
688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)(in banc), our
reviewing court states:
[A]lthough the motivation to combine here differs
from that of the applicant, the motivation in the
prior art to combine the references does not have to
be identical to that of the applicant to establish
obviousness.
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On page 6 of the answer, the Examiner provides the
following rationale: one of ordinary skill in the art at the
time the invention was made would have been motivated to use
the Pellegrini guard ring to prevent current leakage in the
Yamaka Schottky barrier infrared photovoltaic detector. We
note that the Appellants have not argued that this is an
improper rationale. Upon our review of the references, we
find that one of ordinary skill in the art would have reason
to combine Pellegrini's guard rails so as to prevent current
leakage as disclosed and suggested by Pellegrini in col. 4,
lines 25-27, with the Yamaka's Schottky barrier infrared
photovoltaic detector.
On page 4 of the brief, Appellants argue that neither
Yamaka nor Pellegrini teaches that SiGe intermediate layer has
a Ge concentration selected from a range of 1% to 40%. The
Examiner responds to this argument on page 7 of the answer
stating that Yamaka discloses that the Ge concentration in the
SiGe layer is a concentration of 30%.
We find in col. 3, lines 4-61, that Yamaka teaches that
the SiGe intermediate layer has a Ge concentration of 30%.
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Therefore, Yamaka reads on Appellants' claim 3.
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In view of the foregoing, we find that the Examiner did
not err in rejecting claims 1 and 3 under 35 U.S.C. § 103.
Therefore, we will sustain the decision of the Examiner.
On page 4 of the brief, Appellants argue that neither
Yamaka and Pellegrini teaches or suggests a Schottky barrier
infrared photovoltaic detector wherein the SiGe intermediate
layer has a thickness that is selected from a range of 10 to
800 angstroms. Appellants argue that this thickness adjusts
the barrier height and is not discussed in the cited
references.
Turning to Yamaka, we find that Yamaka teaches in Fig. 1
that the intermediate layer has a thickness of 1000 angstroms.
Therefore, we find that Yamaka does not teach a Schottky
barrier infrared photovoltaic detector wherein the SiGe
intermediate layer has a thickness that is selected from a
range of 10 to 800 angstroms. Therefore, we will not sustain
the Examiner's rejection of claim 2 as well as the rejection
of the dependent claims from claim 2, claims 4 through 7.
Therefore, the decision of the Examiner rejecting claims
1 and 3 under 35 U.S.C. § 103 is affirmed; however, the
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Application 08/496,849
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decision of the Examiner rejecting claims 2 and 4 through 7
under 35 U.S.C.
§ 103 is reversed.
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Application 08/496,849
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a).
AFFIRMED-IN-PART

MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO )
Administrative Patent Judge ) APPEALS
AND
)
) INTERFERENCES
)
ERIC FRAHM )
Administrative Patent Judge )
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Application 08/496,849
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MRF/dal
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Application 08/496,849
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