Ex Parte Kondo et al

Board of Patent Appeals and Interferences

Aug 23, 2002

08463761 (B.P.A.I. Aug. 23, 2002)

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for publication and is not binding precedent of the Board.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. 45
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SEIICHI KONDO, YASUO WADA, TSUYOSHI UDA, TOKUO KURE,
TSUNEO ICHIGUCHI, SHINJI OKAZAKI and YOSHIMASA MURAYAMA
____________
Appeal No. 2001-1193
Application No. 08/463,761
____________
HEARD: July 11, 2002
____________
Before KRASS, BARRETT and LALL, Administrative Patent Judges.
LALL, 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 1-3, 13-24, and 27-51.
Claims 5-12 have been non-elected and claims 4, 25 and 26 have been
canceled.
The disclosed invention is directed to a superfine electronic
device constructed with atomic fine lines. The following claim is
illustrative of the invention.
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1. An atomic fine line pn junction element comprising:
an atomic fine line arranged on one or a plurality of
straight lines, in a ring shape or on a curve; and
respective elements disposed in a proximity of and spaced
apart from said atomic fine line for supplying electrons and
holes thereto.
There is no art rejection in this case.
Claims 1-3, 13-24, and 27-51 stand rejected under 35 U.S.C.
§ 112 first paragraph for lack of enablement.
Rather than repeat the argument of Appellants and the
Examiner, we make reference to the brief (Paper No. 35), reply
brief (Paper No. 39) and the Examiner’s answer (Paper No. 36) for
respective details thereof.
OPINION
We have considered the rejections advanced by the Examiner
and the supporting arguments. We have, likewise, reviewed the
Appellants’ arguments set forth in the briefs.
We reverse.
The Examiner has failed to set forth a prima facie case for
the rejection which is entirely based on the lack of enablement.
An analysis of whether the claims under appeal are supported
by an enabling disclosure requires a determination of whether
that disclosure contained sufficient information regarding the
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subject matter of the appealed claims as to enable one skilled
in the pertinent art to make and use the claimed invention. The
test for enablement is whether one skilled in the art could make
and use the claimed invention from the disclosure coupled with
information known in the art without undue experimentation. See
United States v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d
1217, 1223 (Fed. Cir. 1988); In re Stephens, 529 F.2d 1343, 1345,
188 USPQ 659, 661 (CCPA 1976).
In order to make a rejection, the Examiner has the initial
burden to establish a reasonable basis to question the
enablement provided for the claimed invention. See In re
Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir.
1993) (examiner must provide a reasonable explanation as to why
the scope of protection provided by a claim is not adequately
enabled by the disclosure). A disclosure which contains a
teaching of the manner and process of making and using an
invention in terms which correspond in scope to those used in
describing and defining the subject matter sought to be patented
must be taken as being in compliance with the enablement
requirement of 35 U.S.C. § 112, first paragraph, unless there
is a reason to doubt the objective truth of the statements
contained therein which must be relied on for enabling support.
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Application No. 08/463,761
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Assuming that sufficient reason for such doubt exists, a
rejection for failure to teach how to make and/or use will be
proper on that basis. See In re Marzocchi, 439 F.2d 220, 223,
169 USPQ 367, 369 (CCPA 1971). As stated by the court,
it is incumbent upon the Patent Office, whenever a
rejection on this basis is made, to explain why it
doubts the truth or accuracy of any statement in a
supporting disclosure and to back up assertions of
its own with acceptable evidence or reasoning
which is inconsistent with the contested statement.
Otherwise, there would be no need for the applicant
to go to the trouble and expense of supporting his
presumptively accurate disclosure.
Id. at 224, 169 USPQ at 370.
Once the Examiner has established a reasonable basis to
question the enablement provided for the claimed invention, the
burden falls on Appellant to present persuasive arguments,
supported by suitable proofs where necessary, that one skilled
in the art would be able to make and use the claimed invention
using the disclosure as a guide. See In re Brandstadter,
484 F.2d 1395, 1406, 179 USPQ 286, 294 (CCPA 1973). In making
the determination of enablement, the Examiner shall consider the
original disclosure and all evidence in the record, weighing
Appeal No. 2001-1193
Application No. 08/463,761
1 The appellant may attempt to overcome the examiner's doubt
about enablement by pointing to details in the disclosure but may
not add new matter. The appellant may also submit factual
affidavits under 37 CFR § 1.132 or cite references to show what
one skilled in the art knew at the time of filing the
application.
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evidence that supports enablement1 against evidence that the
specification is not enabling.
Thus, the dispositive issue is whether the Appellants'
disclosure, considering the level of ordinary skill in the
art as of the date of Appellants' application, would have
enabled a person of such skill to make and use the
Appellants' invention without undue experimentation. The
threshold step in resolving this issue as set forth supra is
to determine whether the Examiner has met his burden of
proof by advancing acceptable reasoning consistent with
enablement. This the Examiner has not done.
In an effort to establish a prima facie case for lack of
enablement for the claims on appeal, the Examiner asserts
(answer at page 4 and 5):
Eigler et al in Nature 4/90 shows a line of xenon
atoms on a nickel surface, and states in the last
paragraph “We anticipate that there will be a
limiting class of adsorbed atoms and molecules that
may be positioned by this method”. In other words,
it would be nice to be able to position any atom
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anywhere on any surface, however, the mechanics and
enablement of such structures is not obvious. Further-
more the elementary structure shown by Eigler is not a
functioning pn junction device. Hashizume et al in
Applied Surface Science ‘92, Jeon et al Physical Review
letters ‘92, Aruga et al ‘84, and Hashizume et al ‘91,
all of record, show atomically manipulated alkali metal
atoms on a surface of silicon. These structures also
are not functional pn junction devices, but merely lines
of alkai atoms on a silicon surface. Hashizume ‘96, of
record, shows a line of Ga metal atoms on a substrate
of hydrogen passivated silicon, but again, this is no
functioning pn junction device, and at most is merely
a line or “wire” of metal gallium atoms.
In summation, there is no enablement for a
functioning pn junction device. Appellant’s disclosure
is at best a hypothetical description of atomically
manipulating several species of atoms in precise spatial
relationship to form hypothetical pn junction devices.
There is no proof that appellant had in his possession
the manufacturing capability of making these atomic pn
junction structures, nor is there any proof that
appellant has actually made these devices, such as
electron micrographs of finished devices and Current
vs. Voltage measurements proving pn junction behavior.
Appellants cite (brief at page 15) In re Chilowsky, 229
F.2d 457, 462, 108 USPQ 321, 325 (CCPA 1956) and quote that
“the mere fact that something is (sic, has) not previously
been done clearly is not, in itself, sufficient basis for
rejecting all applications supporting to disclose how to do
it.” Appellants have also filed four declarations by Dr.
Tomihiro Hashizume (Paper No. 5, filed on May 9, 1996, Paper
No. 14, filed on September 5, 1997, Paper No. 20, filed on
August 4, 1998, and Paper No. 26, filed on February 9, 1999)
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showing the actual photographs and the measurements of a
device made using the Appellants’ disclosure in an effort to
prove that such a device was indeed enabled to an artisan,
the declarant being such a person.
In response to the argument based on In re Chilowsky,
the Examiner asserts (answer at page 7) that “this is not the
case with atomic fine line pn junction devices which have not
yet been built and demonstrated to work as pn junction
devices.” Furthermore, the Examiner has presented his
analysis of the declarations at pages 7, 8, 9 and 10 of the
Examiner’s answer and concludes (answer at page 10):
the declarant’s assertions that the claimed devices
will indeed operate as pn junction devices is again
not proven and accordingly not persuasive. Appellant’s
arguments that metals can operate like bulk semi-
conductors devices in accordance with the teachings
of the application are also not probative of pn
junction diode behavior. Where are the convincing
current vs voltage measurements? Band diagrams are
not probative.
Appellants respond to the Examiner’s objections
regarding the four declarations at pages 3-7 of the reply
brief. Appellants contend that, in the declarant’s
laboratory test device, a gallium fine line would work as a
pn junction device in accordance with Appellants’ disclosure,
notwithstanding the fact that only a single metal, gallium,
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was involved (it works because the two different valence
electronic states for the metal), and that hydrogen
terminated silicon was used instead of the disclosed silicon
dioxide because the two are well recognized equivalents
(reply brief at page 4).
Comparing the arguments of Appellants and the Examiner,
we are persuaded by Appellants’ assertions, largely based on
the actual results obtained by the declarant by making a
device made according to the disclosure of Appellants. On
the other hand, the Examiner has presented no factual
evidence to contest the actual measurements which are
presented by the declarant, and is indulging only in sheer
speculation based on the literature, especially the Eigler
article published in Nature (answer at page 4). Keeping
in mind the absence of any facilities in the United States
Patent and Trademark Office to test out any device, we are
constrained to give full faith and credit to the declarations
and the statements made therein by the declarant that the
device tested in the declarant’s laboratory was made
according to the disclosure of Appellants, and that the
laboratory results are indeed the actual results. We have no
means to contest or verify such experimental results.
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Therefore, we do not sustain the rejection of claims 1-
3, 13-24, and 27-51 under 35 U.S.C. § 112 first paragraph for
lack of enablement.
The Examiner’s decision under 35 U.S.C. § 112 first
paragraph for lack of enablement is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF
) PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
PSL/jrg
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