Ex Parte Ohitsu

Board of Patent Appeals and Interferences

Feb 23, 2010

11398549 (B.P.A.I. Feb. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte YOSHINORI OHITSU
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Appeal 2009-004304
Application 11/398,549
Technology Center 2800
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Decided: February 23, 2010
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Before BRADLEY R. GARRIS, CHUNG K. PAK, and TERRY J. OWENS,
Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 2, and 4-10. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM for the reasons set forth in the Examiner's Answer and
below.
Appellant claims a compound semiconductor laser device comprising
a first cladding layer and a second cladding layer formed on the first
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Application 11/398,549

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cladding layer wherein the second cladding layer has a carrier concentration
lower than a carrier concentration of the first cladding layer (claim 1).
Representative claim 1 reads as follows:
1. A compound semiconductor laser device comprising:

a semiconductor substrate of first conduction type;

a first cladding layer of the first conduction type formed on the
semiconductor substrate;

a second cladding layer of the first conduction type formed on the first
cladding layer and having a carrier concentration lower than a carrier
concentration of the first cladding layer;

an active layer formed on the second cladding layer; and

a third cladding layer of second conduction type formed on the active
layer, wherein the carrier concentration of the first cladding layer is from
over 1 x 1018 cm-3 to 2 x 1018 cm-3, and

wherein the carrier concentration of the second cladding layer is from
1 x 1017 cm-3 to 5 x 1017 cm-3.

The references set forth below are relied upon by the Examiner as
evidence of anticipation and obviousness:
Arakida 6,647,043 B2 Nov. 11, 2003
Ishizaki 6,982,438 B2 Jan. 3, 2006
The Examiner rejects claims 1, 4, 5, 8, and 9 under 35 U.S.C. § 102(e)
as being anticipated by Ishizaki.
The Examiner rejects claims 2, 6, 7, and 10 under 35 U.S.C. § 103(a)
as being unpatentable over Ishizaki in view of Arakida.

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The § 102 Rejection
Appellant's argument against this rejection is directed solely to the
claim 1 limitation "a second cladding layer of the first conduction type
formed on the first cladding layer and having a carrier concentration lower
than a carrier concentration of the first cladding layer" (Br. 3-4). Therefore,
all claims rejected under § 102 will stand or fall with independent claim 1.
In describing the Examiner's rationale for this rejection, Appellant
states that, "[a]ccording to the Examiner, the band gap energies of Ishizaki's
crystal layers corresponds [sic] to the carrier concentrations of the claimed
invention" (Br. ¶ bridging 3-4). Appellant argues "[t]he Examiner's rejection
improperly equates the configuration of the claimed invention with that of
Ishizaki, in that the band gap energy of Ishizaki has nothing to do with 'a
carrier concentration [being] lower than a carrier concentration of the first
cladding layer' as recited in claim 1" (Br. 4).
Contrary to Appellant's above-quoted statement, the Examiner's § 102
rejection of claim 1 is not based on correspondence between the band gap
energies of Ishizaki's crystal layers and the carrier concentrations of the
claimed invention (See Ans. ¶ bridging 3-4, ¶ bridging 7-8). Instead, the
Examiner's rationale for this rejection is based on the carrier concentrations
disclosed by Ishizaki in the Specification and drawing (id.). It follows that
Appellant's argument is unpersuasive because it fails to address, and identify
error in, the rationale on which the Examiner's § 102 rejection is based.
The § 103 Rejection
Appellant's arguments against the § 103 rejection do not address with
any reasonable specificity any claim limitation other than the above-quoted
limitation of claim 1 (Br. 5-11). Moreover, these arguments, like those
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concerning the § 102 rejection, fail to address, and therefore fail to identify
error in, the rationale on which the Examiner's conclusions of obviousness
are based (id.; cf., Ans. 5-9).
Finally, Appellant asserts that "secondary considerations such as long-
felt need and failure of others overcome the obviousness rejection of claims
2, 6, 7, and 10" (Br. 10; bolding deleted). This assertion is contrary to
Appellant's subsequent statements that no evidence is being submitted by
Appellant in this appeal (Br. 11 at "EVIDENCE"; 15 at "EVIDENCE
APPENDIX"). In any event, Appellant relates this assertion of secondary
considerations only to the previously quoted limitation of claim 1 (App. Br.
¶ bridging 10-11). Secondary considerations such as long-felt need and
failure of others are not relevant to and cannot overcome the § 102 rejection
of claim 1. See In re Wiggins, 488 F.2d 538, 543-44 (CCPA 1973)
(nonobviousness evidence relevant to a § 103 rejection is not pertinent to a §
102 rejection). Additionally, as support for this assertion, Appellant relies
on statements in the Specification which appear to be unrelated to Ishizaki.
In the record of this appeal, Appellant has not even alleged much less
established that the Specification statements evince long-felt need and
failure of others with respect to the Ishizaki reference applied by the
Examiner.
For these reasons, Appellant has failed to identify any error in the
Examiner's § 103 rejection.
Conclusion
In light of the foregoing, we sustain the Examiner's § 102 rejection of
claims 1, 4, 5, 8, and 9 as being anticipated by Ishizaki as well as the
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Examiner's § 103 rejection of claims 2, 6, 7, and 10 as being unpatentable
view Ishizaki in view of Arakida.
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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