10329783 (B.P.A.I. May. 16, 2008)

Ex Parte Johnson

Board of Patent Appeals and InterferencesMay 16, 2008

10329783 (B.P.A.I. May. 16, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte FRANK S. JOHNSON ____________ Appeal 2008-0070 Application 10/329,783 Technology Center 2800 ____________ Decided: May 16, 2008 ____________ Before JOSEPH F. RUGGIERO, ANITA PELLMAN GROSS, and KEVIN F. TURNER, Administrative Patent Judges. RUGGIERO, Administrative Patent Judge. ORDER REMANDING TO THE EXAMINER A preliminary review of the record before us leads us to conclude that this case is not in condition for a decision on appeal. Accordingly, we hereby remand the application to the Examiner for consideration of the following matters: I. A reconciliation of the differences of the claim language in independent claims 6 and 8 in the instant application and that of independent claim 1 in U.S. Patent No. 6,570,242 (based on parent application Serial No. 09/196,375). Appeal 2008-0070 Application 10/329,783 Independent claim 1 of U.S. Patent No. 6,570,242 is directed to an integrated circuit which includes a first transistor with doped buried region within a semiconductor body with portions having a first and second thickness with the second thickness being less than the first thickness. A pertinent portion of this claim sets forth that the first collector, base region, and emitter regions are disposed over the region having the first thickness and at least the emitter region and base region extend over the portion having the second thickness. This claim language is in accord with the description in the Specification and Figure 3n of the drawings which indicate that the emitter region 422 extends over the second thickness (thinner) portion 348 of the buried region but not over the first thickness (thicker) portion 320. In the instant divisional application, the language of independent claim 6 (allowed by the Examiner) and appealed independent claim 8, which are method counterparts of the circuit claim 1 in the parent application and presumably based on the same disclosure, again sets forth that the emitter region extends over the second thickness portion of the buried region. In contrast, however, to claim 1 in the parent issued application, in independent claims 6 and 8 in the instant divisional application, the claim language sets forth that the first thickness is less than the second thickness. With this limitation, the portion of claims 6 and 8 which recites the extent of the emitter region, i.e., “over said portion having a second thickness,” must be interpreted as requiring that the emitter region extends over the thicker portion of the buried region. We find no description of such an occurrence in Appellant’s Specification and, indeed, the illustration in Figure 3n of the 2 Appeal 2008-0070 Application 10/329,783 drawings indicates that the emitter region 422 never extends over the thicker portion 320 of the buried region. Accordingly, since the apparent inconsistencies in the language of independent claim 1 of U.S. Patent No. 6,570,242, the issued patent based on parent application 09/196,375, and independent claims 6 and 8 of the instant divisional application impact a proper review of the Examiner’s rejections, the Examiner is required to provide a detailed explanation addressing the inconsistencies. II. A further explanation and analysis and indication of support for the Examiner’s conclusion that Appellant’s varying thickness overlap region 322, and region 30 in the applied Hebert reference, each actually consists of multiple regions of varying thickness. The Examiner’s assertion that Appellant’s overlap region 322 and Hebert’s region 30 actually consist of multiple “regions” of varying thickness forms the basis for the Examiner’s 35 U.S.C. § 102(b) prior art rejection of claims 8 and 11. This interpretation also applies to the Examiner’s 35 U.S.C. § 112, first paragraph, rejection since it is apparent, from the discussion in Part I supra, that this is the only interpretation for which the language of independent claims 6 and 8 would have proper written description support. Further, since the Examiner’s basis for the 35 U.S.C. § 112, first paragraph, rejection, is premised on a concern for proper disclosure of the extent of Appellant’s emitter region over the buried region, this would provide an explanation as to why claims 6 and 8 were not included in the Examiner’s written description requirement rejection. 3 Appeal 2008-0070 Application 10/329,783 According to the Examiner (Ans. 8), the areas under microscopic points on a curve outlining a varying thickness region, such as region 30 in the Hebert reference, are actually “regions” themselves. We find nothing in the disclosure of Hebert, however, which indicates that region 30 is anything more than a single region of varying thickness. Similarly, the overlap region 322 is described at paragraphs [0019] and [0020] of Appellant’s Specification as a single region of varying thickness in the masked area 314 under mask 312 which forms the basis for the formation of emitter and base regions. Accordingly, for us to properly review the Examiner’s stated rejections, the Examiner is required to provide a further explanation and analysis as to the basis for the Examiner’s stated interpretation of the claimed “regions.” III. A detailed explanation of the reasons for allowance of independent claim 6. We find no explanation on the record before us as to the reasons for allowance of independent claim 6. A review of claim 6 reveals that it includes limitations directed to the formation of the electron collecting, electron control, and electron emitting regions identical to what appears in the first transistor forming portion of independent claim 8. Claim 6 also includes method steps directed to masking, doping, and diffusing to form the claimed single doped buried region of different thickness portions. A review of the Hebert reference applied by the Examiner against independent claim 8, however, indicates that these masking, doping, and diffusing steps are also present, at the very least, in the Abstract page of Hebert. Accordingly, since the allowed status of claim 6 appears, on its 4 Appeal 2008-0070 Application 10/329,783 face, to be inconsistent with the Examiner’s stated rejection of at least claim 8, the Examiner is required to provide a detailed explanation for the allowance of claim 6. CONCLUSION This remand to the Examiner pursuant to 37 C.F.R. § 41.50(a)(1) is made for further consideration of a rejection. Accordingly, 37 C.F.R. § 41.50(a)(2) applies if a Supplemental Examiner's Answer is written in response to this remand by the Board. Current Office policy requires that any supplemental answer be approved and signed by a Technology Center Director or designee. See Manual of Patent Examining Procedure (MPEP) § 1211.01 (8th ed., Rev. 5, Aug. 2006). If a supplemental Examiner’s Answer is written in response to this remand, failure by Appellant to exercise one of the two options specified by 37 CFR § 41.50(a)(2) (2006) will result in sua sponte dismissal of the appeal as to all the claims that are rejected. This application, by virtue of its “special” status, requires an immediate action. See MPEP § 708.01. It is important that the Board be informed promptly of any action affecting the appeal in this case. 5 Appeal 2008-0070 Application 10/329,783 REMANDED eld TEXAS INSTRUMENTS INCORPORATED P O BOX 655474, M/S 3999 DALLAS TX 75265 6