Takeshi Kadono et al.

Patent Trials and Appeals Board

Oct 24, 2019

14442373 - (D) (P.T.A.B. Oct. 24, 2019)

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.
14/442,373 05/12/2015 Takeshi Kadono SGIP153474 5986
26389 7590 10/24/2019
CHRISTENSEN O'CONNOR JOHNSON KINDNESS PLLC
1201 Third Avenue
Suite 3600
Seattle, WA 98101
EXAMINER
HSIEH, HSIN YI
ART UNIT PAPER NUMBER
2816
NOTIFICATION DATE DELIVERY MODE
10/24/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
efiling@cojk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TAKESHI KADONO and KAZUNARI KURITA
____________________

Appeal 2019-000322
Application 14/442,373
Technology Center 2800
____________________

Before RAE LYNN P. GUEST, DEBRA L. DENNETT, and LILAN REN,
Administrative Patent Judges.

REN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 14/442,373

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection2 of claims
11, 12, and 14–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

RELATED APPEAL
Appellant provides a related appeal for U.S. Patent Application No.
14/442,355. Br. 4.

CLAIMED SUBJECT MATTER
The claims are directed to “a method of producing a semiconductor
epitaxial wafer, which can suppress metal contamination by achieving
higher gettering capability.” Spec. ¶ 1. Claim 11, reproduced below, is
illustrative of the claimed subject matter:
11. A semiconductor epitaxial wafer, comprising:
a semiconductor wafer containing at least one of carbon
and nitrogen, wherein the least one of carbon and nitrogen is
distributed throughout the semiconductor wafer; a modifying
layer formed from a certain element contained as a solid
solution in the semiconductor wafer, the modifying layer being

1 The applicant under 37 C.F.R. § 1.46, and hence the appellant under 35
U.S.C. § 134, is the real party in interest, identified as “SUMCO
Corporation.” Appeal Brief of March 23, 2018 (“Br.”), 3.
2 Final Office Action of October 6, 2017 (“Act.”). In this opinion, we also
refer to the Application filed May 12, 2015 (“Spec.”), the Examiner’s
Answer of August 14, 2018 (“Ans.”), and the Reply Brief of October 12,
2018 (“Reply Br.”).

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formed in a surface portion of the semiconductor wafer; and a
first epitaxial layer on the modifying layer,
wherein a half width of the concentration profile of the
certain element in the depth direction of the modifying layer is
100 nm or less.

Claims Appendix (Br. 18−19) (emphasis added).

REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Asayama et al.
Glayish et al.
Ono et al.

JP2010040864
US 2009/0206270 Al
US 2006/0266278 Al
Feb. 2, 2010
Aug. 20, 2009
Nov. 30, 2006

REJECTIONS
The Examiner rejects claims 11, 12, and 14–20 “under 35 U.S.C.
112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph” as failing to meet the
definiteness rejection. Final Act. 3.
The Examiner rejects claims 11, 12, and 14–19 under pre-AIA 35
U.S.C. 103(a) as being unpatentable over Asayama and Ono. Final Act. 4.
The Examiner rejects claim 20 under pre-AIA 35 U.S.C. 103(a) as
being unpatentable over Asayama, Ono, and Glayish. Final Act. 7.

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OPINION
Indefiniteness Rejection of Claim 113
We review the appealed indefiniteness rejection for error based upon
the issues identified by Appellant and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After having
considered the evidence presented in this Appeal and each of Appellant’s
contentions, we are not persuaded that reversible error has been identified,
and we affirm the Examiner’s indefiniteness rejection based on the
arguments raised and the evidentiary record.
The Examiner rejects claim 11 as indefinite finding that the claim
term “the half width of the concentration profile” is ambiguous, rendering
the scope of claim 11 unclear when read in light of the Specification. Final
Act. 3. More specifically, the Examiner reasons, when read in light of the
Specification, a skilled artisan may reasonably define the claim term in
multiple possible ways. Ans. 3; see also Final Act. 3–4.
Appellant argues that a skilled artisan would have understood the term
“half width of the concentration profile” to mean “full width at half
maximum” (“FWHM”) – as opposed to “half width at half maximum”
(“HWHM”) of the concentration profile. Br. 7. Appellant argues that the

3 Appellant does not present separate arguments for the indefiniteness
rejection of claims 12 and 14–20. See Br. 6–10. The indefiniteness rejection
of claims 12 and 14–20 therefore stands or falls with that of claim 11. See 37
C.F.R. § 41.37(c)(1)(iv).
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ordinary dictionary definition, the prior art, as well as the Specification
supports Appellant’s position. Id.
Appellant’s argument with regard to the Specification does not
persuade us. The Specification does not define the term “half width.” The
data in Table 1 includes the “half width” of various examples which is about
50 nm but does not unequivocally define the term to mean FWHM nor limit
the term to none other than FWHM. See Spec., Table 1. Appellant argues
that had the Examiner allowed amendments to Figures 4 and 5, “it should be
possible to draw a line measuring about 50 nm[]” on these illustrations. Br.
8. We note that Figures 4 and 5 are on a scale of 0 to 2 µm. While
Appellant’s amended figures would have supported their interpretation of the
term “half width,” Appellant has not shown that a skilled artisan would have
understood such a line on Figures 4 and 5 to be the recited “half width,” and
would necessarily excludes all other meanings but FWHM. Appellant’s
attorney argument, not based on the evidentiary record, does not persuade us
of reversible error. As the court states in In re Morris, 127 F.3d 1048, 1056
(Fed. Cir. 1997):
The appellants urge us to consult the specification and some of
the cited prior art . . . and interpret the disputed language more
narrowly in view thereof. When read in light of this material,
according to applicants, the ‘true’ meaning of the phrase
emerges. We decline to attempt to harmonize the applicants’
interpretation with the application and prior art. Such an
approach puts the burden in the wrong place. It is the
applicants’ burden to precisely define the invention, not the
PTO’s. See 35 U.S.C. § 112, ¶ 2. . . . [T]his section puts the
burden of precise claim drafting squarely on the applicant.

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Appellant also provides a copy of a dictionary definition of “half
width” from “http://encyclopedia2.thefreedictionary.com/half-width (from
June 28, 2017)” whose image is reproduced below as Figure 1:

Figure. 1 An image of the dictionary definition provided by Appellant. Br. 7.
The Examiner finds that this dictionary definition is not specific as to
which “ branches of spectroscopy” the definition is applicable and therefore
is not necessarily applicable to the ion implantation using secondary ion
mass spectroscopy at issue in the Specification. Ans. 3. Appellant argues, on
the other hand, that the Examiner reversibly erred in failing to apply the
preponderance of the evidence standard in considering this piece of
evidence. Reply Br. 2.
Although the dictionary definition of the phrase “a half width of the
concentration profile” is relevant to the indefiniteness rejection, the inquiry
here is whether a skilled artisan would have understood the phrase to mean
FWHM only and not HWHM. See Ex parte Miyazaki, 89 USPQ 2d 1207, *5
(BPAI 2008) (precedential) (“[I]f a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite.”). Because the dictionary definition does not
support Appellant’s argument that the skilled artisan would have limited the
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meaning to FWHM only, no reversible error has been identified in the
Examiner’s evaluation of this piece of evidence.
Appellant also presents a prior art reference, namely Patent No.
5,929,462 (“the ’462 Patent”), which uses “FWHM” to refer to “the half-
width of the photoluminescence spectrum.” Br. 8 (citing ’462 Patent at
4:33). We note, however, that the ’462 Patent also uses the acronym
“FWHM” to refer to “the half-width at half maximum.” ’462 Patent at 5:26–
27 (“Both the half-width at half maximum of the photoluminescence
spectrum (FWHM) and the current density thresh old were measured to
evaluate the laser characteristics of the Semiconductor optical device 10.”).
Appellant does not explain why this statement in the ’462 Patent supports
the argument that the recited “half width” is “known in the art as ‘Full Width
at Half Maximum’ or FWHM[.]” Br. 7. The ’462 Patent is therefore not
entirely consistent with the dictionary meaning provided by Appellant –
further underscoring the Examiner’s finding that there are multiple
reasonable meanings of the disputed term.
In analyzing this case, we are mindful of the “essential purpose of
patent examination [which] is to fashion claims that are precise, clear,
correct, and unambiguous. Only in this way can uncertainties of claim scope
be removed, as much as possible, during the administrative process.” In re
Zletz, 893 F.2d 319, 321–22 (Fed. Cir. 1989) (“During patent examination
the pending claims must be interpreted as broadly as their terms reasonably
allow. . . . The reason is simply that during patent prosecution when claims
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can be amended, ambiguities should be recognized, scope and breadth of
language explored, and clarification imposed.”).
“[I]f a claim is amenable to two or more plausible claim constructions,
the USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex
parte Miyazaki, 89 USPQ 2d 1207, *5 (BPAI 2008) (precedential). In this
case, the ’462 Patent does not clarify the ambiguity raised by the Examiner
but rather provides that “FWHM” may refer to “the half-width at half
maximum” (’462 Patent at 5:26–27) and that “the half-width of the
photoluminescence spectrum” may refer to “FWHM” (’462 Patent at 4:33).
Given the inconsistencies between the dictionary meaning and the ’462
Patent, we are not persuaded that reversible error has been identified in the
Examiner’s finding that the evidence as a whole does not persuasively show
that one of ordinary skill in the art would have understood the term “half
width” to mean full width at half maximum only. Based on the record before
us, which does not provide that other possible definitions should be excluded
or are unreasonable, we sustain the Examiner’s indefiniteness rejection.
Obviousness Rejections
Review of the rejections under 35 U.S.C. § 103(a) would require
considerable speculation as to the scope of the claims. Such speculation
would not be appropriate. In re Steele, 305 F.2d 859, 862 (CCPA 1962)
(“[W]e do not think a rejection under 35 U.S.C. § 103 should be based on
such speculations and assumptions.”). We, therefore, decline to reach the 35
U.S.C. § 103(a) rejection as a result of our affirmance of the indefiniteness
rejection, and the ambiguous meaning of the term “half width.”
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Objections to the Specification
Appellant argues that the new matter objection, relating to amended
Figures 4 and 5, under section 132(a) is improper. Br. 15. We decline to
reach this matter which is solely within the jurisdiction of the Commissioner
of Patents. See 37 C.F.R. § 1.181.
To the extent that the new matter objection affects or relates to the
indefiniteness rejection, we affirm the objection for the reasons stated with
regard to the indefiniteness rejection. See MPEP § 608.04(c) (“Where the
new matter is confined to amendments to the specification, review of the
examiner’s requirement for cancelation is by way of petition. But where the
alleged new matter is introduced into or affects the claims, thus necessitating
their rejection on this ground, the question becomes an appealable one, and
should not be considered on petition even though that new matter has been
introduced into the specification also.”).

CONCLUSION
The Examiner’s indefiniteness rejection of claims 11, 12, and 14–20 is
affirmed.
We decline to reach the Examiner’s obviousness rejections of claims
11, 12, and 14–20.
Claims
Rejected
Basis Affirmed Reversed
11, 12, and
14–20
§ 112(b) or 35
U.S.C. 112 (pre-
AIA), second
paragraph
11, 12, and
14–20

11, 12, and
14–20
§ 103(a) Not
reached
Not
reached
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Claims
Rejected
Basis Affirmed Reversed
Overall
Outcome
11, 12, and
14–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED