Ex Parte Toida

Board of Patent Appeals and Interferences

Jul 18, 2011

10853116 (B.P.A.I. Jul. 18, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MASAHIRO TOIDA
____________

Appeal 2009-014531
Application 10/853,116
Technology Center 3700
____________

Before MICHAEL W. O’NEILL, STEFAN STAICOVICI,
and KEN B. BARRETT, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Masahiro Toida (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 3, 4, 8, 10-13, and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Applicant’s Admitted Prior Art (APA),
Ishibashi (U.S. Pat. Pub. 2002/0154578 A1, pub. Oct. 24, 2002), and Wu
(U.S. Pat. No. 4,439,245, iss. Mar. 27, 1984) and claims 10-13 under 35
U.S.C. § 103(a) as unpatentable over APA, Ishibashi, Wu, as applied to
claim 8, and Kaukeinen (U.S. Pat. No. 4,880,494, iss. Nov. 14, 1989) or
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Nakae (JP 04-085511 A, pub. Mar. 18, 1992).1 We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
The Invention
The claims on appeal relate to a laser annealing apparatus.
Claim 4, reproduced below, is illustrative of the subject matter on
appeal.
4. A laser annealing apparatus
comprising:
a laser light source, which emits a laser
beam, the laser light source including a GaN-
based semiconductor laser;
a first optical path which irradiates a film-
shaped subject to be annealed with the laser beam
on one surface of the film-shaped subject to be
annealed;
a second optical path which irradiates the
film-shaped subject to be annealed with the laser
beam on another surface of the film-shaped subject
to be annealed; and
a scanning unit, which performs scanning by
relatively moving the film-shaped subject to be
annealed and the laser beams,
wherein the laser light source emits a laser
beam having a wavelength satisfying the following
condition,

α(λ)d ≤ 4.6

where α(λ) is an absorption coefficient when
the laser beam is absorbed in the film- shaped
subject to be annealed, and d is a film thickness of
the film-shaped subject to be annealed.

1 We note that the Examiner has rejected claims 10-13 with and without the
teachings of Kaukeinen and Nakae. This does not affect our disposition of
this appeal.
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OPINION
We have carefully reviewed the Examiner’s rejection in light of the
Appellant’s remarks and response from the Examiner. As a result of this
review, we conclude that the Examiner has interpreted the disputed claim
recitation as incorporating the characteristics of the film-shaped subject to be
annealed (workpiece, Examiner’s nomenclature) to define another claimed
feature, i.e., the wavelength of the laser beam generated by the GaN laser
light source. As such, we conclude that the Examiner has determined that
any prior art GaN laser, e.g., in Ishibashi, when emitting a laser beam onto
the workpiece, the film, would inherently have its wavelength satisfy the
claimed condition.
Accordingly, the issue before us is whether the Examiner has set forth
sufficient findings in order to shift the burden to Appellant to prove that the
wavelength condition of the GaN laser disclosed in Ishibashi does not
possess the claimed functional wavelength condition that Appellant asserts
to be critical for establishing novelty in the claimed subject matter since we
note that a patent applicant is free to recite features of an apparatus either
structurally or functionally, see In re Swinehart, 439 F.2d 210, 212 (CCPA
1971) (“[T]here is nothing intrinsically wrong with [defining something by
what it does rather than what it is] in drafting patent claims.”) ,“[y]et,
choosing to define an element functionally, i.e., by what it does, carries with
it a risk.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Since, as
stated in Swinehart, 439 F.2d at 213:
[W]here the Patent Office has reason to believe
that a functional limitation asserted to be critical
for establishing novelty in the claimed subject
matter may, in fact, be an inherent characteristic of
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the prior art, it possesses the authority to require
the applicant to prove that the subject matter
shown to be in the prior art does not possess the
characteristic relied on.
Turning to whether the Examiner set forth sufficient findings in order
to shift the burden, the Examiner found that Ishibashi describes a GaN laser
that is used for annealing. Ans. 3. Wu describes that for overcoming
puddling problems in an annealing process, the wavelength of the laser has
to be within a particular range since this range has been empirically and
experimentally related to the absorption characteristic of the material to be
annealed, viz. silicon (Wu, col. 4, ll. 32-39), a material used in the
Appellant’s Specification. Wu further describes that given the relationship
of photon energy to wavelength and the requirement for adequate absorption
of photon energy, the wavelength of the laser beam is related to the photon
energy and thus is used as a criterion to determine the thickness of the
surface layer to be annealed. Wu, col. 4, l. 43 to col. 5, l. 5. As such, the
Examiner determined that Wu suggests an existence of the well-known
relation of laser wavelength to the absorption of the material to be annealed.
Ans. 3.
Given the findings above, we conclude that the Examiner has set forth
sufficient evidence to believe that a functional limitation asserted to be
critical for establishing novelty in the claimed subject matter may, in fact, be
an inherent characteristic of the prior art. Thus, the burden is shifted to
Appellant to prove that the subject matter shown to be in the prior art, the
GaN laser, does not possess the characteristic of the claimed wavelength
condition relied on to establish novelty of the claimed subject matter.
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Turning to Appellant’s arguments, they are directed to arguing that
the claimed construction of the disputed limitation, an alleged lack of
reasoning to combine the prior art to arrive at the claimed invention,
distinguishing cases cited by the Examiner, and contending that Wu’s
teachings are limited to what is expressly stated and thus do not necessarily
establish that Wu’s laser satisfies the claimed condition. App. Br. 10-13
and Reply Br. 4-10.
We concur with Appellant’s claim interpretation of the claimed
wavelength condition. We also concur with the Examiner’s finding that in
order for the claimed wavelength condition to be prima facie rendered
obvious by the prior art, it is sufficient for the Examiner to find something
within the prior art that would be capable of satisfying the claimed
wavelength condition. In this case, the Examiner found the prior art taught a
GaN laser, a GaN laser being used to anneal, and a teaching that it is known
in the art that laser beam wavelength needs to be related to the “workpiece”
being annealed in order to avoid problems in an annealing process. The
Appellant’s invention uses a GaN laser and anneals a similar material to the
prior art, and discloses a relation of the wavelength to absorption coefficient
of the material. As such, we conclude that the Examiner has provided
sufficient findings to establish that it would have been prima facie obvious
to a person of ordinary skill in the art to have the claimed wavelength of the
laser beam satisfy the claimed condition set forth in the claims for the
reasoning articulated by the Examiner. We conclude, based on our
discussion above, that the Examiner’s reasoning has rational underpinnings
for concluding that the claimed invention would have been obvious to a
person having ordinary skill in the art. We also conclude that Appellant’s
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arguments have not proven that the subject matter shown to be in the prior
art, the GaN laser, does not possess the characteristic relied on to establish
novelty of the claimed subject matter, the claimed wavelength condition.

DECISION
For the reason above, the Examiner’s rejection of claims 3, 4, 8, 10-
13, and 17 under 35 U.S.C. § 103(a) as unpatentable is affirmed.

AFFIRMED

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