Ex Parte Kobayashi et al

Patent Trial and Appeal Board

Feb 23, 2015

12243139 (P.T.A.B. Feb. 23, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NOBUHIKO KOBAYASHI and SHIH-YUAN WANG
____________

Appeal 2013-004567
Application 12/243,139
Technology Center 1700
____________

Before BRADLEY R. GARRIS, TERRY J. OWENS, and
GEORGE C. BEST, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 11–20. We have jurisdiction under 35 U.S.C. § 6.
We affirm.

Appellants claim a hetero-crystalline structure comprising a support
structure with a first layer of non-single crystalline material (e.g., silicon)
which is combined with the support structure or a second layer (e.g., metal)
to form a combined layer (e.g., silicide layer), in which the combined layer
does not comprise a layer of catalyst material (e.g., the silicide layer is
catalyst-free), and a nanostructure of a single crystalline material integral to
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Application 12/243,139

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a crystallite of the combined layer (independent claim 11; see also
independent claim 20).
A copy of representative claim 11, taken from the Claims Appendix of
the Appeal Brief, appears below.
11. A hetero-crystalline structure comprising:
a support structure;
a first layer of non-single crystalline material deposited
on said support structure and combined with said support
structure or a second layer to form a combined layer, in which
the combined layer does not comprise a layer of catalyst
material; and
a nanostructure of a single crystalline material integral to
a crystallite of said combined layer.

Appellants’ arguments are directed to the independent claims only
(see App. Br. 9–17), of which claim 11 is representative. Therefore, the
claims before us will stand or fall with representative claim 11.

The § 112, 1
st
paragraph (written description), Rejection
The Examiner rejects claims 11 and 20 under the 1
st
paragraph of 35
U.S.C. § 112 as failing to comply with the written description requirement
(Final Act. 2–3).
According to the Examiner, Appellants’ original disclosure fails to
provide descriptive support for the claim 11 limitation “the combined layer
does not comprise a layer of catalyst material” or for the claim 20 limitation
“a catalyst-free silicide layer” (id.).
Appellants argue that descriptive support for these claim limitations is
provided by their Specification disclosures of growing nanostructures “using
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3
catalyst-free epitaxial growth” (Spec. ¶¶ 35 and 39; App. Br. 9–10
(incorrectly citing ¶¶ 34 and 38)).
Appellants’ argument lacks persuasive merit. As correctly explained
by the Examiner, these disclosures merely teach that nanostructures are
formed via catalyst-free epitaxial growth and are silent regarding the
combined layer being without catalyst (Ans. 9). For example, based on
these disclosures, the combined layer could include a catalyst which is not
involved with catalyzing epitaxial growth. Furthermore, we agree with the
Examiner that the argument is undermined by Appellants’ disclosure and
claims regarding the combined layer being titanium silicide (id. (citing Spec.
¶ 33 and claims 14, 19)) in combination with Appellants’ teaching of
transition metals such as titanium being catalysts (id. (citing Spec. ¶ 17)).
For the reasons expressed in the Final Action, the Answer, and above,
we sustain the § 112, 1
st
paragraph (written description), rejection of claims
11 and 20.
1

The § 112, 2
nd
paragraph, Rejection
The Examiner rejects claims 11–20 under the 2
nd
paragraph of 35
U.S.C. § 112 for failing to particularly point out and distinctly claim the
subject matter which Appellants regard as their invention (Final Act. 3).
The Examiner determines that these claims are rendered indefinite by
the independent claim requirement that the combined layer of claim 11 and

1
Dependent claims 12–19 also appear to suffer from the written description
deficiency of independent claims 11 and 20. In any further prosecution that
may occur, the Examiner should consider rejecting these dependent claims
for violating the written description requirement.
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4
the silicide layer of claim 20 be free of catalyst (id.). For reasons analogous
to those discussed above, the Examiner considers Appellants’ Specification
and claims to provide conflicting teachings as to what materials “are or are
not catalysts” (id.).
In response, Appellants state that the Examiner appears to be asserting
the independent claims exclude a silicide based catalyst but that “no such
evidence has been provided by the Office to suggest this” (App. Br. 11).
Presumably, the silicide referred to by Appellants includes titanium
silicide which is disclosed and claimed as present in the combined/silicide
layer (see Spec. ¶ 33 and claim 19) from which catalyst is excluded
according to the independent claims. However, contrary to Appellants’
above quoted statement, the Examiner expressly finds that Wu teaches
titanium silicide is a catalyst (Final Act. 5 (citing ¶ 38)). Moreover, as
pointed out by the Examiner, Appellants’ response to this rejection “has not
address[ed] the issue that [it] is unclear what materials are and are not
catalyst” (Ans. 10). Finally, there is no convincing merit in Appellants’
unsupported assertion that “a person having skill in the art will know which
‘transition metals and noble metals’ used would and would not produce a
catalyst layer” (Reply Br. 6).
We sustain the § 112, 2
nd
paragraph, rejection of claims 11–20 for the
reasons given in the Final Action, the Answer, and above.

The § 103 Rejections
Under 35 U.S.C. § 103(a), the Examiner rejects claims 11 and 14–19
as unpatentable over Kabir (US 2007/0096304 A1, published May 3, 2007)
and Wu et al. (US 2007/0105356 A1, published May 10, 2007 (hereinafter
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Application 12/243,139

5
“Wu”)) (Final Act. 4–6) and rejects claims 12, 13, and 20 as unpatentable
over these references in combination with Kawazu et al. (Low-Temperature
Crystallization of Hydrogenated Amorphous Silicon Induced by Nickel
Silicide Formation, 29 JAPANESE JOURNAL OF APPLIED PHYSICS 2698–2704
(1990) (hereinafter “Kawazu”)) (Final Act. 6–7).
In rejecting these claims under § 103 notwithstanding their
indefiniteness, the Examiner states “[f]or the purposes of expediting
examination, gold is considered a catalyst” (id. at 5), finds Kabir and Wu
teach various materials albeit not gold as catalysts (id.), and at least
implicitly interprets the claims as excluding gold catalyst only (id.).
We commend the Examiner’s efforts in “expediting examination”
(id.). However, rejecting a claim as both indefinite and unpatentable over
prior art is generally limited to circumstances where the degree of
uncertainty is not great and where the claim is subject to more than one
interpretation and at least one such interpretation would render the claim
unpatentable over prior art. See Ex parte Ionescu, 222 USPQ 537 (Bd. App.
1984) and MPEP § 2173.06 (Rev. 9, Aug. 2012). Here, the degree of claim-
scope uncertainty is great for the reasons well stated by the Examiner.
Further, the record before us does not support a determination that it is
reasonable in light of Appellants’ Specification to interpret the claims as
excluding gold catalyst only.
Therefore, the § 103 rejections are not sustained solely on the
procedural grounds that the claims are so indefinite these rejections
necessarily involve inappropriate speculation and assumption.

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CONCLUSION
The decision of the Examiner is affirmed.

TIME PERIOD FOR RESPONSE
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

cdc