Ex Parte Nam et al

Board of Patent Appeals and Interferences

Sep 14, 2011

11117462 (B.P.A.I. Sep. 14, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOONG-WOO NAM, JONG-HWAN PARK,
and MEE-AE RYU
____________

Appeal 2010-001623
Application 11/117,462
Technology Center 2800
____________

Before MAHSHID D. SAADAT, MARC S. HOFF,
and BRADLEY W. BAUMEISTER, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2010-001623
Application 11/117,462

2
Appellants request rehearing of the March 25, 2011 Decision on
Appeal (“Decision”), wherein we affirmed the rejection of claims 1-4, 6-16,
and 19 as anticipated, or in the alternative, as obvious over Yang. We have
reconsidered the Decision in light of Appellants‟ arguments and find the
arguments presented by Appellants to be persuasive for the reasons
explained below. Thus, we will modify our original Decision to reverse the
prior art rejection of claims 1-4, 6-16, and 19 over Yang.
The disputed claim limitation is “a ratio of a G band peak integral (IG)
and a D band peak integral (ID) being at least 5.” Using triangular
estimation to determine the area under the G and D bands, the Examiner
asserted that the ratio of integrals in Figures 8, 12D, and 18B is shown to be
more than 5 (Ans. 6, 9-11), which shifted the burden to Appellants.
Appellants explained that Figure 8 of Yang did not show the claimed ratio
(Reply Br. 17), but did not provide similar explanations for Figures 12D and
18B. Thus, the Examiner‟s assertion regarding these two figures was not
rebutted by evidence or Appellants‟ arguments. We pointed out (Decision
5) that there was a reasonable basis for concluding that the estimated ratio of
the G and D band peak integrals in Figures 12D and 18B of Yang could
result in a value of more than 5, which meets the disputed claim limitation.
Appellants‟ arguments regarding the ratio of areas under the G and D
bands in Figures 12D and 18B and the corresponding calculations of the
integrals (Req. for Reh‟g 5-8) are not only untimely, they are based on
Gaussian functions which are founded on a completely different basis of
analysis from the prior calculations which were rough estimates based on
simple triangular approximations.
Appeal 2010-001623
Application 11/117,462

3
However, even if the same triangular approximation approach used
for Figure 8 could be applied in analyzing Figures 12D and 18B, the
Examiner did not provide a reasoned basis to support the conclusion that the
ratio of areas under the G and D bands in Figures 12D and 18B is at least 5.
See Ans. 6 (wherein the Examiner indicates that he does not understand what
claim term “integral ratio” means or what the metes and bounds of the
claims are, and wherein he concludes that the term “„integral‟ [is] merely a
non-distinguishing label”). We conclude that we overlooked the Examiner‟s
failure in providing sufficient basis to establish a prima facie case. As such,
we need not comment on whether Appellants‟ analysis of Figures 12D and
18B of Yang, and the estimation of the G band peak integral and the D band
peak integral in those figures using a Gaussian function, in their Request for
Rehearing establish whether Yang fails to disclose the claimed ratio.

CONCLUSION
The Examiner has not established that Yang teaches or suggests the
recited ratio of the G and D band peak integrals. In view of the foregoing, as
indicated supra, Appellants‟ request for a rehearing of our Decision has been
granted. We modify our prior Decision as to claims 1-4, 6-16, and 19 and
reverse their rejection as anticipated, or in the alternative, as obvious over
Yang. Thus, our affirmance of the Examiner‟s rejection of claim 1-4, 6-16,
and 19 is hereby withdrawn and the rejection is reversed.

Appeal 2010-001623
Application 11/117,462

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DECISION
The request for rehearing is granted.

REHEARING GRANTED

ELD