Ex parte Klocek

Board of Patent Appeals and Interferences

Feb 27, 2001

08476831 (B.P.A.I. Feb. 27, 2001)

The opinion in support of the decision being entered today was not written for publication and
is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PAUL KLOCEK
____________
Appeal No. 1998-1665
Application No. 08/476,831
____________
ON BRIEF
____________
Before GARRIS, PAK, and TIMM, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final rejection of claims
1-5, 69-73, 75-86, which are all of the claims pending in this application. Appellant has withdrawn
claim 73 from appeal (Reply Brief, page 1).
Appeal No. 1998-1665 Page 2
Application No. 08/476,831
THE INVENTION
Appellant's invention relates to a an optical window. Claim 1 is illustrative:
1. An optical window consisting essentially of:
(a) a group III-V compound
(b) doped with an element taken from the class consisting of shallow donors and having a
dopant concentration of from about 5 x 10 to about 2 x 10 atoms/cc15 16
(c) and having less than about 1 x 10 atoms/cc of carbon impurity.7
THE REFERENCES RELIED UPON
The prior art references of record relied upon by the examiner in rejecting the appealed claims
are:
McNeely et al. (McNeely) 3,533,967 Oct. 13, 1970
Bult et al. (Bult) 4,585,511 Apr. 29, 1986

THE REJECTION
Claims 1-5, 69-72, and 75-86 stand rejected under 35 U.S.C. § 103 as being unpatentable
over McNeely in view of Bult.
Appeal No. 1998-1665 Page 3
Application No. 08/476,831
OPINION
Claim 1 is directed to an optical window consisting essentially of a group III-V compound that
has been doped with a dopant in a concentration of from about 5 x 10 to about 15
2 x 10 atoms/cc. The dopant is an element taken from the class consisting of shallow donors. The16
specification indicates that selenium (Se) is a preferred shallow donor dopant (specification, page 6).
Claim 1 also limits the level of carbon impurity to less than about 1 x 10 atoms/cc. The material of the7
optical window is formed by crystallizing a melt of the doped group III-V compound in a carbon cloth
covered graphite crucible subjected to a vertical temperature gradient (specification, pages 8-9).
According to the specification, if the carbon level in the melt is greater than 1 x 10 atoms/cc, then an7
increased amount of Se dopant must be used, such as about 5 x 10 atoms/cc (specification, page 6). 16
The specification indicates that increasing the Se doping level results in a lowering of the mobility of the
electrons and increased non-uniformity and provides an inferior result (specification, page 8).
Therefore, a boron oxide with a water content of 450-550 ppm is added to the melt to assist in removal
of impurities, particularly carbon (Id.).
The examiner rejects the claims over McNeely in view of Bult. McNeely describes a process
of forming GaAs semiconductor single crystals including GaAs double-doped with oxygen and
selenium. McNeely is silent as to the level of carbon. Bult is added to the rejection for the teaching of
using wet boron oxide encapsulant in the growing of a GaAs semiconductor single crystal. The
examiner concludes from the teachings of McNeely and Bult that one ordinary skill in the art would
Appeal No. 1998-1665 Page 4
Application No. 08/476,831
have found it obvious to modify the process of McNeely by the encapsulation process of Bult “to have
gallium arsenide with low carbon in order to produce a stabler composition.” (Answer, page 4).
We note that Bult is silent as to the level of carbon in the semiconductor composition. The
examiner states that the combination of references as applied against the claims teach low carbon
content since the same method as applicant is used to remove the carbon, i.e. the use of a wet boron
oxide. It is the examiner’s position that the specification clearly states that the claimed carbon levels are
obtained solely by using wet boron oxide during growth. The examiner concludes that since the
process suggested by the combination of McNeely and Bult uses wet boron oxide in a GaAs single
crystal growth process, the impurity levels must inherently be the same.
“[I]t is elementary that the mere recitation of a newly discovered function or property, inherently
possessed by things in the prior art, does not cause a claim drawn to those things to distinguish over the
prior art.” In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977)(quoting In re
Swinehart, 439 F.2d 210, 169 USPQ 226 (1971)). Therefore, where the examiner has reason to
believe that a property asserted to be critical for establishing novelty in the claimed subject matter may,
in fact, be an inherent characteristic of the prior art product, the examiner possesses the authority to
require an applicant to prove that the subject matter shown to be in the prior art does not in fact
possess the property. Id. However, before an applicant can be put to this burdensome task, the
examiner must provide enough evidence or scientific reasoning to establish that the assertion of
inherency is reasonable. Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Int. 1990); Ex
Appeal No. 1998-1665 Page 5
Application No. 08/476,831
parte Skinner, 2 USPQ2d 1788, 1789 (Bd. Pat. App. & Int. 1986). It must be remembered that the
examiner bears the initial burden of presenting a prima facie case of unpatentability. In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). In some cases, the examiner’s belief that a particular property was inherent has
been found to be reasonable when it was established that the claimed and prior art products were
identical or substantially identical, or produced by identical or substantially identical processes. See In
re Best, 562 F.2d at 1255, 195 USPQ at 433-34. The examiner relies on the similarity of the
processes as the basis of his belief that the carbon content is inherently within the claimed range.
We are not persuaded that the similarities in the process rise to the level of creating a
reasonable belief that the carbon impurity content of the composition one of ordinary skill in the art
would have created using the teachings of the prior art would have necessarily been at the low level
required by the claims. As pointed out by appellant (Reply Brief, page 3), the specification indicates
that the wet boron oxide assists in removal of impurities, particularly carbon, from the melt
(specification, page 8). However, there is no indication that wet boron oxide is the only factor
determining carbon impurity level. We note that the GaAs of McNeely and Bult are of semiconductor
device grade. There is no evidence presented by the examiner as to the conventional levels of carbon
impurities in GaAs of this grade. We further note that there are differences in the processes which
could reasonably affect the carbon level and the examiner has not offered any evidence or technical
reasoning tending to show that those differences do not have an effect.
Appeal No. 1998-1665 Page 6
Application No. 08/476,831
We note that based on the raw materials and process environment, it may be possible that
carbon may be within the claimed range. However, “[i]nherency ... may not be established by
probabilities or possibilities. The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” Mehl/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365, 52
USPQ2d 1303, 1305 (Fed. Cir. 1999)(quoting In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323,
326 (CCPA 1981)). See also Glaxo, Inc. v. Novopharm Ltd., 830 F.Supp. 871, 874,
29 USPQ2d 1126, 1128 (E.D. N.C. 1993), aff’d, 34 USPQ2d 1565 (Fed. Cir.), cert. denied, 516
U.S. 988 (1995)(“[I]t is not sufficient that a person following the disclosure sometimes obtain the result
set forth in the claim, it must invariably happen.”).
We conclude that the Examiner has failed to establish a prima facie case of obviousness with
respect to the subject matter of all the claims on appeal.
Appeal No. 1998-1665 Page 7
Application No. 08/476,831
CONCLUSION
To summarize, the decision of the Examiner to reject claims 1-5, 69-72, and 75-86 under 35
U.S.C. § 103 is reversed. The appeal with respect to claim 73 has been dismissed as that claim was
withdrawn from appeal.
REVERSED-IN-PART
DISMISSED-IN-PART
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
Appeal No. 1998-1665 Page 8
Application No. 08/476,831
Jerry W. Mills
Baker & Botts
2001 Ross Avenue
Dallas, TX 75201