Ex Parte Ramachandran et al

Patent Trial and Appeal Board

Sep 19, 2012

11561868 (P.T.A.B. Sep. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/561,868 11/20/2006 Balasubramanian Ramachandran 010804 USA FEP/OXD 8232
44257 7590 09/19/2012
PATTERSON & SHERIDAN, LLP - - APPM/TX
3040 POST OAK BOULEVARD, SUITE 1500
HOUSTON, TX 77056
EXAMINER
CAMPBELL, NATASHA N.
ART UNIT PAPER NUMBER
1714
MAIL DATE DELIVERY MODE
09/19/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL
AND APPEAL BOARD
____________

Ex parte BALASYBRANABUAB RAMACHANDRAN, TAE JUNG KIM,
JUNG HOON SUN, JOUNG WOO LEE, HWA JOONG LIM,
SANG PHIL LEE, and JOSEPH MICHAEL RANISH
____________

Appeal 2011-000788
Application 11/561,868
Technology Center 1700
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of our Decision of August 29, 2012. In
that Decision, we sustained the rejections of record.
We have reconsidered our decision of August 29, 2012, in light of
Appellants’ comments in the Request for Rehearing, and Appellants have
not convinced us of error therein.
Appeal 2011-000788
Application 11/561,868

2
On page 2 of the Request for Rehearing, Appellants argue that:
the Board uses "naturally flow" to find that the additional elements in
Claim 16 were inherently included in subject matter suggested by the
combination of references without explanation as to why the missing
elements asserted to "naturally flow" from the combined references
are obvious. The legal authority cited by the Board refers to additional
advantages, not additional claim elements, and provides no guidance
for the present case. Thus, the Board erroneously asserts that claim
elements not described in the cited references are inherent, and fails to
support rejection of Claims 16-20 as obvious over the cited
references.
However, as we stated on page 4 of our Decision:
The Examiner explains that, although the applied art does not
explicitly teach that the process as modified would cause deposited
phosphorus dopants to volatilize, because Savas utilizes similar
conditions as described in Appellants' Specification in conducting the
process, then such a result would occur when conducting the modified
process according to the teachings of the applied art. Ans. 6. In other
words, implicit in the Examiner's position is that the additional
advantage of phosphorus deposited dopant removal would have
flowed naturally from the proposed combination of Tanaka, MacLeish
and Savas, and we agree.
Thus, it is the Examiner’s position that the claimed subject matter
pertaining to applying heat “to volatize the deposited phosphorus”, as recited
in claim 16, such that removal of this volatized phosphorus would occur
(also recited in claim 16), when the chamber is exhausted, would have
flowed naturally from the teachings of the applied references. As quoted,
supra, Appellants seem to draw a distinction between “additional
advantages” versus “additional claim elements”. In the instant case, the
additional advantage is also a claim recitation, and is met by the applied art,
in either form.
Appeal 2011-000788
Application 11/561,868

3
In conclusion, based on the foregoing, Appellants’ Request is granted
to the extent that we have reconsidered our Decision, but is denied with
respect to making any change therein.

DENIED

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