Ex Parte LELL

Board of Patent Appeals and Interferences

Nov 25, 2002

09272969 (B.P.A.I. Nov. 25, 2002)

-1-
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today was not written for publication and is not
binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ALFRED LELL
________________
Appeal No. 2001-0726
Application 09/272,969
________________
ON BRIEF
________________
Before JERRY SMITH, DIXON and GROSS, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 15-18. Claims 1-14 stand
withdrawn from consideration as being directed to a non-elected
invention.
Appeal No. 2001-0726
Application 09/272,969
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The disclosed invention pertains to a semiconductor
configuration, particularly an optical transmitter and receiver
configuration formed on a single semiconductor substrate.
Representative claim 15 is reproduced as follows:
15. A semiconductor configuration having at least two
semiconductor elements, comprising:
a semiconductor substrate having a top side;
at least two differently doped surface regions embodied in
said top side; and
at least two active layer structures each having a plurality
of layers disposed on different ones of said at least two
differently doped surface regions and each defining a
semiconductor element, each of said plurality of layers having a
lowermost electrically conductive layer disposed toward said
semiconductor substrate and electrically separated from one
another.
The examiner relies on the following references:
Hara et al. (Hara) 4,794,609 Dec. 27, 1988
Chinen 5,281,829 Jan. 25, 1994
Claims 15 and 16 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by the disclosure of Chinen. Claims 17 and
18 stand rejected under 35 U.S.C. § 103. As evidence of
obviousness the examiner offers Chinen in view of Hara.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
Appeal No. 2001-0726
Application 09/272,969
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OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of anticipation and obviousness relied upon by the examiner as
support for the rejections. We have, likewise, reviewed and
taken into consideration, in reaching our decision, the
appellant’s arguments set forth in the briefs along with the
examiner’s rationale in support of the rejections and arguments
in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon by the examiner supports each
of the rejections before us. Accordingly, we affirm.
We consider first the rejection of claims 15 and 16 under
35 U.S.C. § 102(b) as being anticipated by the disclosure of
Chinen. Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as well
as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital
Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore and
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ
Appeal No. 2001-0726
Application 09/272,969
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303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
The examiner’s finding of anticipation is briefly stated
on page 3 of the examiner’s answer. Appellant argues that the
layer 14 of the Chinen phototransistor is not an integral part of
the substrate 6 of the Chinen device, but is disposed on
substrate 6 after the substrate has been back-etched. Appellant
also argues that layer 14 in Chinen is not decoupled from the
substrate 6 as claimed. Appellant argues that Chinen does not
disclose the differently doped regions which are electrically
decoupled from one another as claimed [brief, pages 9-12].
The examiner responds that although the structure of
Chinen is made by a different process from the claimed invention,
the resulting structures are the same. The examiner also notes
that the doped regions of Chinen are electrically decoupled to
the same extent that the regions in the claimed invention are
decoupled [answer, pages 3-4].
Appellant responds that the phototransistor of Chinen is
not electrically decoupled from the laser whereas the receiver of
the claimed invention is electrically decoupled from the
transmitter. Appellant notes that the claimed invention always
has one of the two diodes in a blocking direction so that layer 3
is electrically decoupled from layer 4. Appellant also notes
Appeal No. 2001-0726
Application 09/272,969
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that a change in the potential at contact 19 or 15 “does not
immediately effect” the operation of receiver diode 12 [reply
brief].
We agree with the examiner that the structure recited in
claim 15 reads on the structure disclosed by Chinen in Figure 2.
First, appellant’s argument that layer 14 of Chinen is not an
integral part of substrate 6 is not persuasive. Claim 15 simply
recites that there are two differently doped surface regions
embodied in the top side of the substrate. We agree with the
examiner that region 14 is clearly embodied in the top surface of
substrate 6 in the resultant structure of Chinen [see Figure 2].
Regions 14 and 6 of Chinen form two differently doped surface
regions in the exact same manner as regions 2 and 3 of the
disclosed invention.
Appellant’s arguments regarding the electrical decoupling
of their invention and of Chinen are also not persuasive.
Appellant’s specification notes that the electrical decoupling
occurs because a p-n junction forms which electrically decouples
the p-redoped surface region 2 from the n-doped surface region 3
[specification, page 9]. We agree with the examiner that the
same electrical decoupling occurs between p-doped region 14 and
n-doped region 6 of Chinen. The specification of this
Appeal No. 2001-0726
Application 09/272,969
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application does not describe any operation of the voltages
applied to the various metal contacts to achieve this electrical
decoupling. Since the disclosed structure for achieving
electrical decoupling is exactly the same as the structure
disclosed by Chinen, we find that Chinen fully meets the
invention of claim 15.
With respect to claim 16, appellant argues that Chinen
does not disclose an optical transmitter diode and an optical
receiver diode as claimed. Notwithstanding this argument, the
laser of Chinen is clearly an optical transmitter diode, and the
phototransistor is clearly an optical receiver diode. Therefore,
we find that the invention of claim 16 is also fully met by the
disclosure of Chinen.
We now consider the rejection of claims 17 and 18 based
on the teachings of Chinen and Hara. In rejecting claims under
35 U.S.C. § 103, it is incumbent upon the examiner to establish a
factual basis to support the legal conclusion of obviousness.
See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed.
Cir. 1988). In so doing, the examiner is expected to make the
factual determinations set forth in Graham v. John Deere Co., 383
U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
Appeal No. 2001-0726
Application 09/272,969
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led to modify the prior art or to combine prior art references to
arrive at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellant have been considered in this decision.
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Application 09/272,969
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Arguments which appellant could have made but chose not to make
in the brief have not been considered and are deemed to be waived
by appellant [see 37 CFR § 1.192(a)].
Claims 17 and 18 recite that the two active layers of
claim 15 are two of a plurality of active layer structures
disposed in a line structure or in an array structure. The
examiner cites Hara as teaching a plurality of lasers and
photodetectors disposed in an array. The examiner finds that it
would have been obvious to the artisan to use the Chinen device
in an array as taught by Hara [answer, page 3]. Appellant argues
that there is no motivation to combine the teachings of Chinen
and Hara [brief, pages 13-15].
We sustain the examiner’s rejection of claims 17 and 18.
As noted by the examiner, Hara teaches that it was well known to
form lasers and photodetectors in an array structure (which would
include a line structure). Appellant has offered no reason why
the artisan would not have been motivated to configure the lasers
and phototransistors of Chinen in this well known manner.
In summary, we have sustained each of the examiner’s
rejections of the claims on appeal. Therefore, the decision of
the examiner rejecting claims 15-18 is affirmed.
Appeal No. 2001-0726
Application 09/272,969
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
JOSEPH L. DIXON ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
JS/ki
Appeal No. 2001-0726
Application 09/272,969
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Lerner and Greenberg
P.O. Box 2480
Hollywood, FL 33022-2480