Ex parte Johnston et al.

Board of Patent Appeals and Interferences

Oct 27, 1999

08199910 (B.P.A.I. Oct. 27, 1999)

Application for patent filed February 22, 1994. 1
According to appellants, this application is a continuation of
Application No. 08/066,605, filed May 24, 1993, now abandoned;
which is a continuation of Application No. 07/808,989, filed
December 17, 1991, now abandoned; which is a continuation of
Application No. 07/515,545, filed April 26, 1990, now
abandoned; which is a continuation of Application No.
07/338,506, filed April 14, 1989, now abandoned; which is a
continuation of Application No. 07/101,303, filed September
25, 1987, now abandoned; which is a division of Application
No. 06/831,113, filed February 20, 1986, now U.S. Patent No.
4,716,130, issued December 29, 1987; which is a continuation-
in-part of Serial No. 06/544,215, filed
October 21, 1983, now abandoned.
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written for publication in a law journal and (2) is not binding
precedent of the Board.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. 56
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WILBUR D. JOHNSTON JR. and JUDITH A. LONG
____________
Appeal No. 1997-0988
Application No. 08/199,9101
____________
HEARD: October 20, 1999
____________
Before HAIRSTON, LALL, and GROSS, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
Appeal No. 1997-0988
Application No. 08/199,910
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 26 through 31, 33, 34, 36 through 44, 46,
47, 49 and 52, which are all of the claims pending in this
application. In the Appeal Brief (page 3), appellants state
that they do not appeal the rejection of claim 49.
Accordingly, only claims 26 through 31, 33, 34, 36 through 44,
46, 47 and 52 are before us on appeal.
The appellants' invention relates to semi-insulating
doped indium phosphide (InP) and devices made therefrom.
Claim 52 is illustrative of the claimed invention, and it
reads as follows:
52. An optoelectronic device or a laser device, said
device comprising a substrate, first and second active regions
of said device, and a region of semi-insulating indium
phosphide based material formed on said substrate and
electrically isolating said first active region from said
active region wherein said region of semi-insulating indium
phosphide based material is formed by the process that
comprises the steps of contacting said substrate with a
deposition gas stream characterized in that said substrate has
a resistivity less than 10 ohm-cm, said semi-insulating3
region has a resistivity of at least 10 ohm-cm, said semi-6
insulating region is epitaxial to said substrate and said
semi-insulating region is formed by introducing a dopant
precursor comprising a composition chosen from the groups
consisting of ferrocene based compositions and iron
pentacarbonyl based compositions into said deposition gas
stream wherein said deposition gas stream is produced by
combining entities including an organo-indium compound and a
Appeal No. 1997-0988
Application No. 08/199,910
We note that a rejection of claims 25 through 31, 33, 362
through 44, and 46 under 35 U.S.C. § 102(e) over Boos,
Statutory Invention Registration No. H291, and a rejection of
claims 25 through 49 under 35 U.S.C. § 103 over admitted prior
art in view of Boos were dropped by the examiner in the final
rejection mailed December 12, 1994. Accordingly, all
arguments concerning such rejections are considered moot.
3
source of phosphorus whereby current flow is confined to
desired device paths.
No prior art references of record have been relied upon
by the examiner in rejecting the appealed claims.2
Claims 26 through 31, 33, 34, 36 through 44, 46, 47, and
52 stand rejected under 35 U.S.C. § 112, first paragraph, as
containing new matter.
Claim 49 is rejected under 35 U.S.C. § 102(e) over Boos,
Statutory Invention Registration No. H291. Appellants
indicate (Brief, page 3) that they are not appealing this
rejection. Accordingly, claim 49 is not before us.
Reference is made to the Examiner's Answer (Paper No. 51,
mailed September 4, 1996) for the examiner's complete
reasoning in support of the rejections, and to the appellants'
Appeal Brief (Paper No. 48, filed June 19, 1995) and Reply
Brief (Paper No. 52, filed October 29, 1996) for the
appellants' arguments thereagainst.
Appeal No. 1997-0988
Application No. 08/199,910
4
OPINION
We have carefully considered the claims and the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we will reverse the
new matter rejection of claims 26 through 31, 33, 34, 36
through 44, 46, 47 and 52.
The examiner's position is that "[t]he original
disclosure here said absolutely nothing about the
'resistivity' of the 'substrate'" (Answer, page 3). We agree
that there is no explicit statement that the substrate "has a
resistivity less than 10 ohm-cm." However, we disagree with3
the examiner that the addition of the substrate's resistivity
is new matter.
In the specification (page 4, lines 29-30), "semi-
insulating" is defined as having a resistivity of at least 103
ohm-cm. One can infer that semiconducting therefore must
equate to having a resistivity less than 10 ohm-cm. 3
Therefore, appellants clearly have support for the specific
range of less than 10 ohm-cm for the resistivity of a3
semiconducting element.
Appeal No. 1997-0988
Application No. 08/199,910
5
Further, appellants state (Specification, page 2, lines
1-2) that "[s]emi-insulating material is generally formed by
suitably doping the desired III-V semiconductor material."
Appellants continue with a description of the formation of
semi-insulating gallium arsenide, which "involves introducing
chromium as a dopant," and "chemical vapor deposition (CVD)
growth in a gas transport system" (Specification, page 2,
lines 6-9). The next paragraph (Specification, page 2, lines
32-33) begins, "[i]ndium phosphide has also been formed by a
CVD process," and then describes the specifics of making semi-
insulating indium phosphide by a gas transport system.
Appellants conclude (Specification, page 3, lines 16-18) that
"only chromium-based dopant precursors have been utilized to
form semi-insulating indium phosphide." Thus, appellants
imply that indium phosphide begins as semiconducting and
becomes semi-insulating after suitable doping. Appellants'
examples all begin with a "polished indium phosphide
substrate" (Specification, page 8, line 21, page 10, line 5,
and page 11, lines 29-31). Accordingly, appellants'
substrates are semiconducting, which, as defined by
appellants, means having a resistivity less than 10 ohm-cm.3
Appeal No. 1997-0988
Application No. 08/199,910
6
The examiner makes unsupported assertions (Answer, page
4) that "[t]he 'substrate' is an inert supporting body, and
need not form any part of any 'active regions,'" and that
"normally integrated circuit III-V devices, as the
specification describes on page 3, are in fact formed on semi-
insulating substrates, with 'active regions' (and insulating
regions) formed over those semi-insulating substrates."
However, the examiner fails to recognize that regardless of
what integrated circuit III-V devices may "normally" use for
substrates, the specification taken as a whole determines the
type of substrate used in the instant application. As
explained above, the combination of what is explicitly
disclosed and the implications therefrom support a conclusion
that appellants' substrate is in fact semiconducting and not
"an inert supporting body."
To summarize, appellants indicate that semi-insulating
regions are formed by doping semiconducting material.
Appellants describe forming indium phosphide semi-insulating
layers, thereby implying that indium phosphide is a
semiconducting material. Appellants specify in the examples
that the substrate is made of indium phosphide. As indium
Appeal No. 1997-0988
Application No. 08/199,910
As we have found sufficient support for the substrate's3
resistivity within the specification, we need not consider the
affidavits of Dr. Dexter Johnson and Dr. Erdmann Frederick
Schubert.
7
phosphide is semiconducting, the substrate must be
semiconducting. Appellants define semi-insulating as having a
resistivity greater than 10 ohm-cm, which makes the3
resistivity of a semiconducting material less than 10 ohm-cm. 3
As the substrate is semiconducting, it has a resistivity of
less than 10 ohm-cm. Therefore, appellants have support in3
the specification for a substrate with a resistivity of less
than 10 ohm-cm. Consequently, we must reverse the new matter3 3
rejection.
CONCLUSION
The decision of the examiner rejecting claims 26 through
31, 33, 34, 36 through 44, 46, 47, and 52 under 35 U.S.C. §
112, first paragraph, is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
PARSHOTAM S. LALL ) BOARD OF PATENTS
Appeal No. 1997-0988
Application No. 08/199,910
8
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
APG:clm
Appeal No. 1997-0988
Application No. 08/199,910
9
S. H. Dworetsky
AT&T Bell Laboratories
600 Mountain Avenue
P.O. Box 636
Murray Hill, NJ 07974-0636