Ex parte SEABAUGH

Board of Patent Appeals and Interferences

Aug 29, 1997

08145267 (B.P.A.I. Aug. 29, 1997)

Application for patent filed October 29, 1993. 1
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ALAN C. SEABAUGH
____________
Appeal No. 96-3296
Application 08/145,2671
____________
ON BRIEF
____________
Before THOMAS, HAIRSTON and KRASS, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection
of claims 5, 8 and 9. Claims 6 and 7 are said by the examiner to
Appeal No. 96-3296
Application 08/145,267
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be directed to allowable subject matter and stand objected to as
relying on a rejected parent claim.
The invention pertains to providing an integrated
circuit coupling a silicon-based transistor with a silicon-based
resonant tunneling diode having tunneling barriers including an
amorphous silicon-oxygen compound.
Independent claim 5 is reproduced as follows:
5. An integrated circuit, comprising:
(a) a silicon-based transistor; and
(b) a silicon resonant tunneling diode with tunneling
barriers including an amorphous silicon-oxygen compound, said
diode coupled to said transistor.
The examiner relies on the following references:
Tanoue et al. (Tanoue) 5,229,623 Jul. 20, 1993
European patent (Suematsu) 0194061 Sep. 10, 1986
Japanese patent (Iwamatsu) 63-124467 May 27, 1988
Claims 5, 8 and 9 stand rejected under 35 U.S.C. 103 as
unpatentable over Tanoue, Iwamatsu and Suematsu.
Reference is made to the brief and answer for the
respective positions of appellant and the examiner.
OPINION
We reverse.
Appeal No. 96-3296
Application 08/145,267
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In our view, the examiner simply has not established a
prima facie case of obviousness with regard to the instant
claimed subject matter.
The examiner contends [answer, page 3] that Tanoue
teaches a field effect transistor integrated with a Resonant
Tunneling Diode (RTD) and appellant does not deny it. The
examiner then contends that Iwamatsu and Suematsu suggest the
practice of a circuit as in Tanoue with silicon semiconductor
based material rather than III-V material "because silicon
material is standard in the industry and forms a good oxide for
insulation purposes, and is also shown to be useful for tunneling
and field effect transistor devices." However, it is unclear to
us what portions of Iwamatsu and Suematsu are being relied on by
the examiner for such teachings. The examiner has failed to
identify the particular portions of the references on which he
relies and it appears to us that the examiner's rationale may, in
reality, be based improperly on what is taught by appellant's own
specification.
Further, the examiner contends [answer, page 3] that
Iwamatsu "shows a semiconductor tunneling device with amorphous
silicon oxide tunneling insulator structure" but, again, the
examiner fails to identify exactly what portion of the reference
Appeal No. 96-3296
Application 08/145,267
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he relies on for such a teaching. We find no evidence in the
applied references of "a silicon resonant tunneling diode with
tunneling barriers including an amorphous silicon-oxygen
compound," as claimed. At the bottom of page 3 of the answer,
the examiner also contends that "from Suematsu it is shown that
amorphous silicon oxide tunneling insulator [sic] would have been
clearly obvious tunneling insulator material" but, again, there
is no indication from the examiner as to what portion or portions
of Suematsu are relied on for such a teaching. It is unclear to
us how the examiner is construing the "artificial semiconductors"
of Suematsu to somehow suggest the claimed silicon resonant
tunneling diode with tunneling barriers including an amorphous
silicon-oxygen compound.
We agree with appellant, at page 4 of the brief, that
if Iwamatsu and/or Suematsu were combined with Tanoue,
...the result would be either a field
effect transistor plus an induced
potential well field effect transistor
(Iwmatsu [sic, Iwamatsu]) or a field
effect transistor plus a junction diode
of "artificial semiconductor" materials
which could give resonant conduction
behavior (Suematsu). But neither of
these would suggest the silicon based
resonant tunneling with amorphous
tunneling barriers as required by
independent claim 5 and its dependent
claims...
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Application 08/145,267
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The examiner has not convinced us otherwise.
Appeal No. 96-3296
Application 08/145,267
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The examiner's decision rejecting claims 5, 8 and 9
under 35 U.S.C. 103 is reversed.
REVERSED

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
KENNETH W. HAIRSTON ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ERROL A. KRASS )
Administrative Patent Judge )

Appeal No. 96-3296
Application 08/145,267
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Carlton H. Hoel
Texas Instruments Patent Department
Mail Station 219
P.O. Box 655474
Dallas, TX 75265