Ex Parte Parsons

Board of Patent Appeals and Interferences

Sep 27, 2006

10655904 (B.P.A.I. Sep. 27, 2006)

1 Application for patent filed September 5, 2003, which according to
Appellant, is a continuation-in-part of Application No. 09/906,441, filed July
16, 2001, now U.S. Patent No. 6,713,762.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES D. PARSONS
____________
Appeal No. 2006-2104
Application No. 10/655,9041
____________
ON BRIEF
____________
Before KRASS, SAADAT, and MACDONALD, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from
the Examiner’s final rejection of claims 1-5 and 7-21. Claims
22-26 have been allowed and claim 6 has been objected to as being
dependent upon a rejected base claim but otherwise allowable if
rewritten to include all the limitations of the base claim and
any intervening claim.
We affirm.
Appeal No. 2006-2104
Application No. 10/655,904
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BACKGROUND
Appellant’s invention is directed to electromagnetic
radiation detection at wavelengths shorter than about 10
micrometers. According to Appellant, a radiation sensor made of
SiC having a thickness of at least 200 micrometers shows acoustic
absorption mechanism that is useful in detecting radiation at
less than 10 micrometers (specification, page 3).
Representative independent claim 1 is reproduced as follows:
1. An electromagnetic radiation detection system,
comprising:
a body of SiC having a thickness of at least about 400
micrometers, and
a detector arranged to detect acoustic absorption of
electromagnetic radiation having a wavelength less than
about 10 micrometers by said SiC body.
The Examiner relies on the following prior art reference:
Ichikawa 5,025,243 Jun. 18, 1991
Claims 1-5 and 7-21 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ichikawa.
Rather than reiterate the opposing arguments, reference is
made to the briefs and the answer for the respective positions of
Appellant and the Examiner. Only those arguments actually made
by Appellant have been considered in this decision. Arguments
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which Appellant could have made but chose not to make in the
briefs have not been considered (37 CFR § 41.37(c)(1)(vii)).
OPINION
With respect to the rejection of claims 1-5 and 9-13,
Appellant argues that operating a sensor in the narrow portion of
the infrared range below 10 micrometer, as recited in claim 1 is
an unexpected result (brief, page 8). Appellant further
distinguishes the acoustic absorption of the claimed subject
matter over the impurity absorption of the conventional devices
by stating that it was not previously known that SiC can be made
to exhibit acoustic absorption for infrared wavelengths less than
10 micrometers (id.).
The Examiner responds by stating that the infrared
absorption described in Ichikawa is not limited to wavelengths
above 10 micrometer since it relates to “infrared” radiation
which includes the full spectrum range (answer, page 5). The
Examiner further argues that the claims are not limited to
absorption of only the wavelength that are less than 10
micrometers (id.) and may include other wavelengths too (answer,
page 6).
Before addressing the Examiner’s position and Appellant’s
rebuttal, it is an essential prerequisite that the claimed
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subject matter be fully understood. Absent an express intent to
impart a novel meaning to a claim term, the words take on the
ordinary and customary meanings attributed to them by those of
ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive
Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003). The claim
construction analysis begins with the words of the claim. See
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582, 39
USPQ2d, 1573, 1576 (Fed. Cir. 1996). Claims will be given their
broadest reasonable interpretation consistent with the
specification, and limitations appearing in the specification are
not to be read into the claims. In re Etter, 756 F.2d 852, 858,
225 USPQ 1, 5 (Fed. Cir. 1985). Accordingly, we will initially
direct our attention to Appellant’s claim 1 to derive an
understanding of the scope and content thereof.
Claim 1 is directed to an infrared sensor which detects
acoustic absorption of electromagnetic radiation having a
wavelength less than about 10 micrometers using a body of SiC
having a thickness of at least about 400 micrometer. Although
Appellant argues that the claimed sensor produces “unexpected
results” because no infrared radiation of wavelength lass than 10
micrometers were previously detected (brief, page 8), Appellant’s
disclosure merely identifies using a single crystal SiC body of
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at least 200 micrometers thickness as the way to achieve such
results (specification, page 4, lines 8-12). However, as argued
by the Examiner, the claimed arrangement still absorbs other
wavelengths or other thicknesses would absorb the smaller
wavelengths. We find this position to be consistent with
Appellant’s own disclosure (page 4, lines 12-14) which states:
While there may be some acoustic absorption with thinner
samples, the amount is so small that it has not previously
been observed.
Therefore, the acoustic absorption, as well as impurity
absorption, appear to be generally present in SiC bodies whereas
the strength of the response in SiC to such absorption may vary
depending on the physical attributes of the SiC body.
Description of crystal structure and the thickness as the
parameters affecting the range of absorbed wavelength in the
specification notwithstanding, the claims are merely limited to
“a body of SiC” having a specific range of thickness.
Therefore, the alleged distinctions made by Appellant with
respect to unexpected results, appear to be based on either the
single crystal structure or other microscopic properties of SiC,
which are not recited in the claims, or on selecting a particular
thickness which apparently Appellant argues to have not been
obvious to one of ordinary skill in the art. We also note that
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the rejection is not based on anticipation and, as stated by the
Examiner, merely requires a skilled artisan to select the
thickness of the SiC body for a particular infrared wavelength
through conducting routine experimentations.
Appellant also argues that the detector of Ichikawa operates
based on impurity absorption and not acoustic absorption (brief,
paragraph bridging pages 8-9). We agree with the Examiner
(answer, pages 6 and 7) that acoustic absorption must occur in
the detector of Ichikawa since the thickness range of its SiC
bodies includes 200 micrometers, which is the same thickness
indicated in Appellant’s disclosure as showing acoustic
absorption (specification, page 7, lines 8-12).
Appellant further argues that since Ichikawa employs SiC
fibers having a thickness of 200 micrometers only along the
center axis of the fiber, the reference teaches away from the
claimed range of thickness of at least 400 micrometers (brief,
page 9). We disagree with Appellant’s characterization of the
claimed “body of SiC” as having a specific shape or dimension
since the claims are not so limited. Absent any particular shape
or specific way of designating any of the dimensions of the SiC
body as the “thickness,” we find the Examiner’s characterization
of the fiber diameter as the body thickness to be reasonable.
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Furthermore, the detector element of Ichikawa is actually
comprised of the entire stacked arrangement of the fibers F as
shown in the Figures wherein the overall thickness of the “body”
as determined by the total diameter of one or more fibers could
be about 400 micrometers.
With respect to claims 7 and 8, Appellant’s arguments are
again premised on a limited interpretation of the claimed “SiC
body” having a particular shape (brief, pages 10-11; reply brief,
pages 1-2). As discussed above, the claimed “SiC body” could
take any shape or configuration such that the claims, as argued
by the Examiner (answer, page 6), read on the uniform thickness
of the fibers in Ichikawa. Additionally, we observe that the
body of SiC disclosed by Ichikawa further includes rows of
multiple fibers or filaments which collectively form a body with
flat surface and uniform thickness (Figures 1a-1b).
With respect to claims 14-18, Appellant argues the same
points that were previously presented in their rebuttal of the
rejection of claim 1. As discussed above with respect to claim
1, modifying Ichikawa to arrive at the claimed thickness range
would have been obvious to one of ordinary skill in the art.
Additionally, we observe that Ichikawa discloses a body of SiC
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which includes at least two rows of filaments with an overall
thickness of at least 400 micrometers.
Turning to the rejection of claims 19-21, we note that
Appellant’s arguments are essentially the same as those provided
for the rejection of claims 7 and 8. Based on the same rationale
discussed above regarding claims 7 and 8, we also remain
unconvinced by Appellant’s arguments that any error occurred in
the Examiner’s conclusion of unpatentability with respect to
claims 19-21.
In view of our review of Ichikawa and the claimed subject
matter encompassed by the claims, we find that the Examiner has
presented a reasonable case of prima facie obviousness.
Accordingly, we sustain the 35 U.S.C. § 103 rejection of claims
1-5 and 7-21 over Ichikawa.
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CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claims 1-5 and 7-21 under 35 U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv).
AFFIRMED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MAHSHID D. SAADAT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ALLEN R. MACDONALD )
Administrative Patent Judge )
Appeal No. 2006-2104
Application No. 10/655,904
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