Gunapala et al.v.Scott et al.Download PDFPatent Trial and Appeal BoardSep 30, 201412249749 (P.T.A.B. Sep. 30, 2014) Copy Citation BoxInterferences@uspto.gov Tel: 571-272-4683 Entered: September 30, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ CALIFORNIA INSTITUTE OF TECHNOLOGY Junior Party (US 7,737,411 B2) (Inventors: Sarath D. Gunapala, David Z. Ting, Cory J. Hill, and Sumith V. Bandara) v. LOCKHEED MARTIN CORPORATION Senior Party (Application No. 13/344,499) (Inventors: Jeffrey W. Scott, Colin E. Jones, Ernie J. Caine, and Charles A. Cockrum) ________________ Patent Interference 105,960 (HHB) (Technology Center 2800) ________________ Before RICHARD E. SCHAFER, JOHN G. NEW, and HUNG H. BUI, Administrative Patent Judges. BUI, Administrative Patent Judge. JUDGMENT – 37 C.F.R. § 41.127(a) Interference No. 105,960 Caltech v. Lockheed Martin 2 A decision of the Board on motions has been issued holding: (1) Lockheed Claims 45-47, 49, and 54-55 of Lockheed’s involved application (Lockheed ‘499 application) are unpatentable under 35 U.S.C. § 103 over prior art; and (2) Caltech Claims 1-6 of Caltech ‘411 patent are considered unpatentable over the same prior art by operation of the presumption of 37 C.F.R. § 41.207(c). Caltech remaining 5 Claims 7-12 of Caltech ‘411 patent and Lockheed remaining Claims 26-29, 36, 37, 39, 43-44, and 53 of Lockheed ‘499 application are fundamentally different, and patentably distinct. The claims of Lockheed ‘499 application are directed to detector devices where grading is performed specifically at “interfaces” between layers in order to facilitate minority carrier transport (holes) while continuing to 10 prevent majority carrier transport (electrons) across the barrier, while remaining claims of Caltech ‘411 patent are directed to detector devices where the absorption layer is comprised of a chirped strain layer supper lattice. Because of these significant differences, neither set of claims renders the other obvious. Thus, these claim sets do not meet the two-way test, and there is no interference-in-fact 15 between remaining claims of Caltech ‘411 patent and Lockheed ‘499 application. See 37 C.F.R. §41.203(a). Because there currently is no basis for formulating a count representing the common patentable subject matter of the parties, it is appropriate to terminate the interference at this point and enter judgment. For the reasons discussed above, it is: 20 ORDERED that Junior Party, Caltech Claims 1-6 of Caltech ‘411 patent (corresponding to the Count) will be cancelled pursuant to 35 USC §135(a); FURTHER ORDERED that Senior Party, Lockheed Claims 45-47, 49, and 54-55 of Lockheed ‘499 application (corresponding to the Count) are finally refused pursuant to 35 USC §135(a); 25 Interference No. 105,960 Caltech v. Lockheed Martin 3 FURTHER ORDERED that a copy of this judgment be made of record in the files of Caltech’s involved patent, U.S. Patent No. 7,737,411 and Lockheed’s involved application, U.S. Patent Application No. 13/344,499; and FURTHER ORDERED that if there is any settlement agreement or related documents which have not been filed, attention is directed to 35 U.S.C. §135(c) 5 and 37 C.F.R. §41.205. /Richard E. Schafer/ ) 10 RICHARD E. SCHAFER ) Administrative Patent Judge ) ) /John G. New/ ) PATENT TRIAL AND JOHN G. NEW ) APPEAL BOARD 15 Administrative Patent Judge ) ) /Hung H. Bui/ ) HUNG H. BUI ) Administrative Patent Judge ) 20 Interference No. 105,960 Caltech v. Lockheed Martin 4 cc (via email delivery): Attorney for Junior Party – Caltech: Joel A. Kauth, Esq. John W. Peck, Esq. 5 KPPB LLP 2400 E. Katella Ave., Suite 1050 Anaheim, CA 92806 Email: Joel.Kauth@kppb.com Email: John.Peck@kppb.com 10 Attorney for Senior Party – Lockheed Martin: Michael K. Mutter, Esq. Naphtali Y. Matlis, Esq. Birch, Stewart, Kolasch & Birch, LLP 15 8110 Gatehouse Road, Suite 100 East Falls Church VA 22042 Email: mailroom@bskb.com BoxInterferences@uspto.gov Tel: 571-272-4683 Entered: September 30, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ CALIFORNIA INSTITUTE OF TECHNOLOGY Junior Party (US 7,737,411 B2) (Inventors: Sarath D. Gunapala, David Z. Ting, Cory J. Hill, and Sumith V. Bandara) v. LOCKHEED MARTIN CORPORATION Senior Party (Application No. 13/344,499) (Inventors: Jeffrey W. Scott, Colin E. Jones, Ernie J. Caine, and Charles A. Cockrum) ________________ Patent Interference 105,960 (HHB) (Technology Center 2800) ________________ Before RICHARD E. SCHAFER, JOHN G. NEW, and HUNG H. BUI, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON MOTIONS – 37 C.F.R. § 41.125(a) I. INTRODUCTION Pending before us are the following substantive motions: Interference No. 105,960 Caltech v. Lockheed Martin 2 (1) Caltech Motion 2 (Paper 21) seeks to attack benefit for the purpose of priority accorded to Lockheed in Declaration-Bd.R 203(d) (Paper 1, pg. 4). Lockheed Opposition 2 (Paper 42) Caltech Reply 2 (Paper 47) 5 (2) Caltech Motion 3 (Paper 22) seeks entry of judgment against only Claims 45-47 of Lockheed’s involved application 13/344,499 based on alleged lack of written description and enablement under 35 U.S.C. § 112, first paragraph. Lockheed Opposition 3 (Paper 43) Caltech Reply 3 (Paper 50) 10 (3) Caltech Motion 4 (Paper 23) seeks entry of judgment against Claims 26-29, 36, 37, 43-47, 49, and 53-55 of Lockheed’s involved application 13/344,499 based on an alleged lack of patentability under 35 U.S.C. § 103. Lockheed Opposition 4 (Paper 44) 15 Caltech Reply 4 (Paper 51) (4) Caltech Motion 5 (Paper 24), which is contingent on the grant of Caltech Motion 3 (Paper 22) for inadequate written description and lack of enablement under 35 U.S.C. § 112, ¶ 1, seeks entry of judgment of no interference-20 in-fact as to Claims 26- 29, 36, 37, 39, 43-44, 49, and 53-55 of Lockheed’s involved application 13/344,499. Lockheed Opposition 5 (Paper 45) Caltech Reply 5 (Paper 52) 25 (5) Lockheed Motion 1 (Paper 26) seeks to redefine the interference by designating Claims 29, 44, and 53 of Lockheed’s involved application 13/344,499 as not corresponding to the Count. Caltech Opposition (Paper 38) Lockheed Reply (Paper 48) 30 Interference No. 105,960 Caltech v. Lockheed Martin 3 After a review of all motions, oppositions and replies, we enter decisions on the following: (1) Caltech Motion 2 (Paper 21) for lack of benefit for the purpose of priority accorded to Lockheed; (2) Caltech Motion 3 (Paper 22) for inadequate written description and lack of enablement under 35 U.S.C. § 112, first paragraph; 5 and (3) Caltech Motion 4 (Paper 23) for lack of patentability under 35 U.S.C. § 103(a) in order to secure the just, speedy, and inexpensive determination of this interference proceeding. 37 C.F.R. § 41.125(a). We do not reach Caltech contingent Motion 5 because the contingent event did not happen. We also do not reach Lockheed Motion 1 because our other decisions result in termination of this 10 interference making it unnecessary to decide whether or not certain of Lockheed’s claims correspond to the Count. For the reasons discussed below, Caltech Motion 2 (Paper 21) for lack of benefit is GRANTED relative to Lockheed’s first provisional application No. 60/865,793 filed on November 14, 2006, and is otherwise DENIED relative to 15 Lockheed’s second provisional application No. 60/880,580 filed on January 12, 2007. With respect to Caltech Motion 3 (Paper 22), the preponderance of the evidence leads us to conclude that Claims 45-47 of Lockheed’s involved application 13/344,499 (“Lockheed ‘499 application”) have not been shown to lack 20 written description support and enablement from the original specification of Lockheed’s involved application. In particular, we find the original specification of Lockheed’s involved application provides written description and enablement of the subject matter of Claims 45-47 and, as such, Lockheed has the right to be in this interference. Accordingly, Caltech Motion 3 (Paper 22) is DENIED as to 25 Claims 45-47 of Lockheed’s involved application based on alleged lack of written Interference No. 105,960 Caltech v. Lockheed Martin 4 description and enablement under 35 U.S.C. § 112, first paragraph. Because Caltech Motion 5 (Paper 24) is contingent upon the granting of Caltech Motion 3 (Paper 22), and Caltech Motion 3 (Paper 22) is not GRANTED, the contingency has not materialized. Accordingly, Caltech Motion 5 (Paper 22) is DISMISSED as moot. 5 With respect to Caltech Motion 4 (Paper 23), the preponderance of evidence also leads us to conclude that Claims 45-47 as well as Claims 49 and 54-55 in Lockheed ‘499 application are unpatentable under 35 U.S.C. § 103(a) over prior art. However, we find Caltech has failed to show that: (1) Lockheed Claims 26-29, 36, 37, 39, 43-44, and 53 are unpatentable under 35 U.S.C. § 103(a) over the same 10 prior art; and (2) the presumption under 37 C.F.R. §41.207(c) does not apply to Caltech’s own Claims 1-6 of Caltech’s involved patent, U.S. Patent No. 7,737,411 (“Caltech ‘411 patent”) in this interference. As such, Caltech Motion 4 (Paper 23) is GRANTED as to Lockheed Claims 45-47, 49, and 54-55, and is otherwise DENIED as to Lockheed Claims 26-29, 36, 37, 39, 43-44, and 53 of Lockheed 15 ‘499 application. Caltech Claims 1-6 of Caltech ‘411 patent are considered unpatentable by operation of the presumption of 37 C.F.R. § 41.207(c). As a result of the above decisions, Caltech no longer has any patentable claims in this interference and Lockheed remaining Claims 26-29, 36, 37, 39, 43- 44, and 53 of Lockheed ‘499 application have not been shown to be unpatentable. 20 Caltech remaining Claims 7-12 of the Caltech ‘411 patent and Lockheed remaining Claims 26-29, 36, 37, 39, 43-44, and 53 of the Lockheed ‘499 application are fundamentally different, and patentably distinct. The claims of Lockheed ‘499 application are directed to nBn-type detector devices where grading is performed specifically at “interfaces” between layers in order to facilitate minority carrier 25 transport (holes) while continuing to prevent majority carrier transport (electrons) Interference No. 105,960 Caltech v. Lockheed Martin 5 across the barrier, whereas the remaining claims of Caltech ‘411 patent are directed to the same detector devices where the absorption layer is comprised of a chirped strain layer supper lattice. Because of these significant differences, neither set of claims renders the other obvious. Thus, these claim sets do not meet the two-way test, and there is no interference-in-fact between remaining claims of the ‘411 5 patent and the ‘499 application. See 37 C.F.R. §41.203(a). Because there currently is no basis for formulating a count representing common patentable subject matter of the parties, it is appropriate to terminate the interference at this point. Consequently, we need not reach Lockheed Motion 1 (Paper 26) to designate Lockheed Claims 29, 44, and 53 of Lockheed ‘499 application as not 10 corresponding to the Count. Therefore, Lockheed Motion 1 (Paper 26) is also DISMISSED as moot. II. BACKGROUND An administrative patent judge (APJ) declared an interference between 15 Junior Party Caltech’s patent, U.S. Patent No. 7,737,411 (“Caltech ‘411 patent”) and Senior Party Lockheed Martin’s application, U.S. Serial No. 13/344,499 (“Lockheed ‘499 application”). Paper 1, p. 1-2. The interfering subject matter is directed to an nBn-type photo detector having a barrier (B) layer disposed between an n-type (n) absorption layer and an 20 n-type contact layer to provide a barrier to the majority carriers (electrons) wherein the barrier (B) layer comprises an alloy concentration graded or varied therein (concentration gradient) in order to reduce bandgap discontinuities and abrupt transitions at heterojunctions, while improving minority carrier (holes) transport across the barrier without requiring an excess voltage (Ex. 2001 at Figs. 13 & 14, 25 Interference No. 105,960 Caltech v. Lockheed Martin 6 and ¶62). The interfering subject matter is represented by a single Count 1, which is Caltech Claim 1 or Lockheed Claim 45. Caltech independent claim 1, which is substantially identical to Lockheed independent claim 45, is reproduced below: 1. A detector comprising: 5 an absorption layer for generating electrons-hole pairs in response to absorbed photons, the absorption layer comprising a semiconductor having majority carriers and minority carriers; a barrier layer comprising a semiconductor adjacent to the absorption layer to provide a barrier to the majority carriers, the 10 barrier layer comprising a concentration gradient; and a contact layer comprising a semiconductor adjacent to the barrier layer. Paper 13, p. 1. Lockheed’s Claim 45 additionally includes the limitation that the detector has no depletion layer.1 Paper 7 at 4-5. Caltech Claims 1-6 (Paper 13; Ex. 15 1002), as well as Lockheed Claims 26-29, 36, 37, 39, 43-47, 49, and 53-55 (Paper 7; Ex. 2001) have been designated as corresponding to the Count. Paper 1, pp. 3-4; Paper 20, p. 2. III. CALTECH MOTION 2 (PAPER 21) FOR LACK OF BENEFIT 20 Caltech Motion 2 (Paper 21) asserts that Lockheed is not entitled to the November 14, 2006 filing date of a first provisional application 60/865,793 because Lockheed’s first provisional application 60/865,793 (Lockheed ‘793 provisional; Ex. 2036) lacks a constructive reduction to practice of the subject 25 matter of the Count. However, Caltech does not attack the benefit of the January 1 Such a limitation is inherent in all nBn-type photo detector structure and, as such, does not require additional or separate patentability determination. Interference No. 105,960 Caltech v. Lockheed Martin 7 12, 2007 filing date of Lockheed’s second provisional application 60/880,580 (Lockheed ‘580 provisional; Ex. 2002). As such, the benefit of the January 12, 2007 filing date of Lockheed’s second provisional 60/880,580 (Ex. 2002) remains intact. Turning now to the benefit chain of Senior Party Lockheed’s involved 5 application, U.S. Serial No. 13/344,499 (Lockheed ‘499 application), that application filed January 5, 2012 is a continuation of U.S. Application Serial No. 13/153,297, filed June 3, 2011, now U.S. Patent 8,399,910 (Lockheed ‘910 patent), which is said a continuation of U.S. Application Serial No. 11/939,464, filed November 13, 2007, now U.S. Patent No. 8,044,435 (Lockheed ‘435 patent) and 10 claims the benefit of the filing dates of two provisional applications 60/880,580, filed January 12, 2007 (Lockheed ‘580 provisional application; Ex. 2002), and 60/865,793, filed November 14, 2006 (Lockheed ‘793 provisional application; Ex. 2036). When this interference was declared, Lockheed was accorded benefit of the filing dates of the continuation applications and both the provisional applications 15 60/880,580, and 60/865,793. As the movant, Caltech bears the burden of establishing that Lockheed should not be accorded benefit of the filing date of its provisional applications. 37 C.F.R. §§ 41.121(b) and 42.208(b); Fiers v. Revel, 984 F.2d 1164, 1169 (Fed. Cir. 1993). “Accord[ed] benefit means Board recognition that a patent application 20 provides a proper constructive reduction to practice under 35 U.S.C. 102(g)(1).2” 37 C.F.R. § 41.201. A constructive reduction to practice is defined in the PTO’s regulations as “a described and enabled anticipation under 35 U.S.C. 102(g)(1) in a patent application of the subject matter of a count.” Id. Where a chain of 2 Patent interferences continue under the relevant statutes in effect on 15 March 2013. See Pub. L. 112-29, § 3(n), 125 Stat. 284, 293 (2011). Interference No. 105,960 Caltech v. Lockheed Martin 8 applications is relied upon the earliest constructive reduction to practice means the first constructive reduction to practice that has been continuously disclosed through a chain of patent applications including in the involved application or patent. For the chain to be continuous, each subsequent application must have been co-pending under 35 U.S.C. 120 or 121 or timely filed under 35 U.S.C. 119 5 or 365(a). Id. In other words, in order to attack the benefit of an application accorded for a count, i.e., deprive Lockheed the benefit of the filing date of its second provisional application 60/865,793 (Ex. 2039), Caltech must explain why Lockheed’s provisional application does not provide a constructive reduction to practice for the 10 count as required by our Standing Order (SO) §208.4.2, i.e., describe at least an enabled embodiment meeting all the limitations of the Count. See Falkner v. Inglis, 448 F.3d 1357, 1362 (Fed. Cir. 2006). An embodiment must also be present in any necessary intermediate applications in the chain. See Stevens v. Tamai, 366 F.3d 1325, 1330-31 (Fed. Cir. 2004). 15 Count 1 requires, inter alia: “the barrier layer comprising a concentration gradient” as recited in Lockheed independent claim 45, upon which claims 46 and 53 depend, and also as recited in independent claim 47 (Paper 7, p. 4). Nevertheless, Caltech characterizes the Count as further including the following: 20 (1) “where the barrier layer is graded with a first grading at a first interface area between said barrier layer and said contact layer and graded with a second grading at a second interface area between said barrier layer and said photo absorbing layer such that the first grading creates a graded transition from the minority carrier band edge of the 25 barrier layer to the minority carrier band edge of the contact layer; and the second grading creates a graded transition from the minority carrier band edge of the photo absorbing layer to the minority carrier band edge of the barrier layer” Interference No. 105,960 Caltech v. Lockheed Martin 9 as recited in Lockheed independent claim 26, from which claims 27-29 depend (Paper 7, p. 3) (emphasis added); (2) “where the barrier layer is graded with a first grading at a first interface area between said barrier layer and said contact layer such 5 that the first grading creates a graded transition from the minority carrier band edge of the barrier layer to the minority carrier band edge of the contact layer” as recited in Lockheed independent claim 36, from which claims 37-39 depend 10 (Paper 7, p. 3) (emphasis added); (3) “where the barrier layer is graded with a grading that creates a graded transition from the minority carrier band edge of the barrier layer to the minority carrier band edge of the contact layer and also creates a graded transition from the minority carrier band edge of the 15 photo absorbing layer to the minority carrier band edge of the barrier layer” as recited in Lockheed independent claim 43, from which claim 44 depends (Paper 7, p. 4) (emphasis added). 20 Caltech contends that Lockheed ‘793 provisional (Ex. 2036): (1) does not disclose the concept of grading3 an interface area between the absorber and barrier layers, and/or an interface area between the barrier and contact layers, and, likewise, (2) does not describe how to create a “concentration gradient” within the barrier layer in the manner recited in Lockheed independent claims 26, 36, 43, 45, 25 and 47. As such, Caltech argues Lockheed ‘793 provisional (Ex. 2036) does not 3 As will be discussed in our decision regarding Caltech Motion 3 (Paper 22) for lack of written description and enablement and Caltech Motion 4 (Paper 22) for lack of patentability, the term “grading” or “compositional grading” refers to changing an alloy concentration in and along a width of a barrier layer between an absorber layer and a contact layer within an nBn-type photo detector. Interference No. 105,960 Caltech v. Lockheed Martin 10 anticipate the subject matter of the count and, therefore, no benefit to Lockheed ‘793 provisional (Ex. 2036) can be accorded to Lockheed ‘499 application in respect to the subject matter of Count 1. Paper 21, pp. 3-6. In its opposition (Paper 42), Lockheed admits that the ‘793 provisional application (Ex. 2036) does not disclose the concept of grading in an interfacial 5 area between the barrier layer and one or both of the contact and absorber layers. Paper 42, Appendix 2, pp. 7-10. However, Lockheed responds that: (1) Lockheed ‘580 provisional (Ex. 2002) provides a constructive reduction to practice of the subject matter of the Count, and (2) Caltech does not present any arguments or evidence challenging the constructive reduction to practice of the subject matter of 10 the count made in the Lockheed ‘580 provisional application. Id. 3 at 11; see also Paper 47, Appendix 2-6. As an initial matter, we note that, contrary to Caltech’s characterization of the subject matter of the Count, the concept of grading at the interface between the absorber and barrier layers, and/or an interface area between the barrier and contact 15 layers as recited in Lockheed independent claims 26, 36, and 43, is included but is not required by the Count. As such, Caltech’s arguments regarding the failure of the ‘793 provisional to disclose the same grading concept are misplaced. Nevertheless, we have reviewed the ‘793 provisional and find that it does not mention a “concentration gradient” within the barrier layer. Lockheed has not 20 directed us to any portions of the ‘793 provisional that describes a concentration gradient or provided any expert testimony explaining how one skilled in the art would have understood the teachings of that application. In view of the foregoing reasons, including Caltech’s failure to address Lockheed ‘580 provisional (Ex. 2036), Caltech Motion 2 (Paper 21) is GRANTED 25 relative to Caltech’s first provisional No. 60/865,793 (Ex. 2036) filed on Interference No. 105,960 Caltech v. Lockheed Martin 11 November 14, 2006, and is otherwise DENIED relative to Caltech’s second provisional No. 60/880,580 (Ex. 2002) filed on January 12, 2007. IV. CALTECH MOTION 3 (PAPER 22) FOR LACK OF WRITTEN DESCRIPTION AND ENABLEMENT 5 Caltech Motion 3 (Paper 22) moves for judgment against Claims 45-47 of Lockheed’s involved application 13/344,499 based on an alleged lack of a written description, and an alleged lack of enablement under 35 U.S.C. § 112, first paragraph. Specifically, Caltech argues Lockheed’s involved application does not 10 provide written description and, likewise, enablement support for a limitation: “barrier layer comprising a concentration gradient” as recited in Claims 45-47. Paper 22 at 1-11. Below are our findings of facts regarding the disclosures of Lockheed’s involved application and Caltech’s involved patent, analysis and conclusion of law 15 regarding written description and enablement support from Lockheed’s involved application for each of the contested Claims 45-47 of Lockheed’s involved application. A. FINDINGS OF FACTS 20 We make the following findings of facts (“FFs”) to resolve issues presented in Caltech Motion 3 (Paper 22). These FFs, as well as others made elsewhere in the Opinion, are supported by at least a preponderance of the evidence on the record. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988). Interference No. 105,960 Caltech v. Lockheed Martin 12 1. 1. The terms “heterojunction” and “heterointerface” are interchangeable and refer to the place at which two layers of dissimilar semiconductors meet. Ex. 2001 at ¶[0032]. 2. The term “barrier interface” refers to the heterojunctions or 5 heterointerfaces between the barrier layer and absorber layer, and the barrier layer and the contact layer within an nBn-type photo detector. Ex. 2001 at ¶[0062]. 2. Lockheed’s Involved Application (Lockheed ‘499 Application) 10 3. Lockheed ‘499 application acknowledges nBn photo-detectors and their structures were known in the prior art. Ex. 2001 at ¶[0029]. 4. Lockheed identifies additional improvements to existing “nBn” technology in six primary areas: (1) photo generated minority carriers generated in the absorber layer diffuse to the barrier layer and such lateral diffusion degrades 15 the modulation transfer function (Ex. 2001 at Figs. 10-11); (2) non-ideal growth of the barrier alloys can lead to spikes in the minority carrier band edge, requiring excess voltage to turn on minority current collection (Ex. 2001 at Figs. 12-14); (3) base nBn structure does not have minority carrier barrier between the absorber layer and the substrate, leading to excess dark currents from thermally generated 20 carriers in the substrate (Ex. 2001 at Figs. 15-16); (4) base nBn structure does not allow mesa isolation of small pixels which can further reduce dark current and enable higher operating temperature (Ex. 2001 at Figs. 17-21); (5) extension of cutoff wavelengths of nBn detectors for threat warning applications (Ex. 2001 at Figs. 22-23); and (6) InGaAs as alloys used to create an nBn structure for a broad 25 5 10 15 Interfer Caltech range of ¶[0060] 5 of a plu structur semicon photo ab concent 2001 at 6 structur reprodu ence No. 1 v. Lockhe applicatio . . Lock rality of ro es: (i) an n ductor con sorbing la rations of ¶[0009]. . Lock e that is su ced below Lockheed’ 05,960 ed Martin ns includi heed discl ws and a p -doped sem tact area; yer and th AlSb, AlA heed’s Fig bject to th with addi s Fig. 2 sh ng IR ima oses an nB lurality of iconduct and (iii) a e contact sSb, AlGa . 2 provid e Count. F tional mark ows a stru 13 ging (Ex. n photo-d columns or photo a barrier (B area, and c AsSb, AlP es a schem ig. 2 of L ings for i cture of an 2001 at Fi etector arr of individu bsorbing l ) layer dis omprising Sb, AlGa atic diagra ockheed ‘4 llustration nBn pho g. 3). Ex. ay compri al nBn de ayer; (ii) a posed betw one or mo PSb, and H m of an n 99 applic . to-detector 2001 at sing, for ea tector n n-doped een the re of alloy gZnTe. E Bn detecto ation is array. ch x. r Interference No. 105,960 Caltech v. Lockheed Martin 14 As shown in Fig. 2 of Lockheed ‘499 application, the barrier (B) layer is disposed between the n-type photo absorbing layer and the n-type contact area, and comprising one or more of alloy concentrations of AlSb, AlAsSb, AlGaAsSb, AlPSb, AlGaPSb, and HgZnTe. Ex. 2001 at ¶[0009]. 7. In particular, Lockheed describes: 5 a barrier layer has been grown4 on the surface of the InGaAs with the unique property of presenting a high barrier to carrier flow in the conduction band, but with negligible barrier in the valence band. This enables a bias to be placed across the device without majority carrier current flow, while allowing the 10 collection of photo-generated minority carriers by diffusion. The undoped wide-bandgap barrier acts simultaneously as surface passivation, contact isolation and minority carrier collector. Thus, there are no high lateral fields in the device, eliminating the perimeter leakage effects. 15 Ex. 2001 at ¶[0033] (emphasis added). 8. In order to simplify device fabrication and realize large arrays of very small pixels, Lockheed also discloses “[t]he barrier layer itself is relatively thin, typically two thousand angstroms or less, and thus it can support latitude for strain 20 in the barrier growth without detriment to device performance.” Ex. 2001 at ¶[0034]. 9. In order to address the area (2) concern where non-ideal growth of barrier alloys can lead to spikes in the minority carrier band edge, Lockheed further discloses “by grading the composition of the barrier [layer] to absorber and 25 contact interfaces, the spikes at heterointerfaces are eliminated… making the 4 Growths are typically done, via molecular beam epitaxy systems. Ex. 2036 at 7:6-8. 5 10 15 20 Interfer Caltech design m ¶[0062] 1 of gradi in Fig. 2 illustrat F of an n alloy at A concent band an alloy wi barrier/c [0062]. 1 barrier l ence No. 1 v. Lockhe ore robus (emphasis 0. Figs. ng the com . Lockhe ion: ig. 13 of Bn-type p barrier int a co s shown in rations, is d no barrie thin the ba ontact int 1. In pa ayer and t 05,960 ed Martin t to variat added). 13 of Loc position o ed’s Fig. 1 Lockheed hoto detec erfaces of ntact layer Fig. 13, t designed t r in a min rrier layer erface and rticular, Lo he photo a ions of all kheed ‘499 f the barri 3 is reprod ‘499 appli tor structu a barrier l of the nB he barrier o provide ority carri is prefera barrier/ab ckheed de bsorbing l 15 oys in the applicati er layer of uced belo cation sho re includi ayer dispo n-type pho layer, grow a barrier in er conduct bly graded sorber inte scribes “[ ayer and th growth pro on is said an nBn d w with ad ws an ener ng grading sed betwe to detecto n using v a majorit ion band. at barrier rface. Ex a]lloys at e contact cess.” Ex to illustrat etector stru ditional m gy band d the comp en an abso r structure ariations o y carrier c The comp interfaces . 2001 at ¶ interfaces area are pr . 2001 at e the bene cture, sho arkings for iagram osition of rber layer . f alloy onduction osition of , i.e., ¶[0024] an between th eferably fits wn an and an d e Interference No. 105,960 Caltech v. Lockheed Martin 16 graded, whereby spikes in minority carrier band edges are substantially reduced.” Ex. 2001 at ¶[0009] (emphasis added). As a result, these graded interfaces on the barrier are said to avoid heterointerface notches that can increase bias voltage due to thermionic emission limits.” Ex. 2001 at ¶[0059]. According to Lockheed, such grading the composition of the barrier layer advantageously facilitates minority 5 carrier transport (holes) while continuing to inhibit or prevent majority carrier transport (electrons) across the barrier of an nBn detector structure. Ex. 2001 at Fig. 13, ¶¶[0024] and [0062]. 12. In view of FF 3-11, Lockheed discloses grading the composition of an alloy at least part of the barrier layer of an nBn detector structure, including, for 10 example, at interfaces between the barrier layer and the photo absorbing layer and the contact area. Ex. 2001 at ¶¶[0009], [0024], [0033]-[0034], [0060], and [0062]. 3. Caltech’s Involved Patent (Caltech ‘411 Patent) 15 13. Caltech ‘411 patent also acknowledges that nBn photo-detectors and their structures were known in the prior art. Ex. 2038 at 1:26-31. 14. Caltech discloses an nBn detector structure that comprises the same sequence of: (i) an n-doped semiconductor photo absorption layer, (ii) an n-doped semiconductor contact layer, and (iii) a middle barrier (B) layer disposed between 20 the photo absorption layer and the contact layer, and that nBn detector structure is further described “where for some embodiments the barrier layer has a concentration gradient, for some embodiments the absorbing layer has a concentration gradient, and for some embodiments the absorbing layer is a chirped strained layer super lattice.” Ex. 2038 at Abstract. 25 5 10 15 20 Interfer Caltech 1 layer, or allows f across t 1 barrier l shown i below: F of a appli barr A barrier l to anoth interfac and a co Lockhe preferab ence No. 1 v. Lockhe 5. Acco the use o or design he device. 6. For p ayer comp n Figs. 3A igs. 3A an n nBn-typ cation incl ier/absorp s shown in ayer, indic er, i.e., a b e (junction ntact laye ed ‘499 ap ly graded 05,960 ed Martin rding to C f a chirped of the ener ” Ex. 2038 urposes of rises a con and 3B. d 3B of C e photo de uding grad tion interfa Caltech’ ated by la arrier/abs ) of a barr r 304. Ex plication w at barrier altech, “[t] strained l gy bands at Abstra this interf centration Figs. 3A a altech ‘41 tector stru ing the co ce (juncti s Figs. 3A bel 306, is orption int ier layer 3 . 2038 at F here the c interface. 17 he use of ayer super so that the ct. erence, an gradient nd 3B of C 1 patent sh cture simil mposition on) to barr and 3B, th graded ac erface (jun 06 dispose igs. 3A-3B ompositio Ex. 2001 a graded b lattice for valence b nBn dete that is subj altech ’41 ow an ene ar to Fig. of alloys ier/contac e compos ross the su ction) to a d between . This is n of an all at ¶¶[0024 arrier or a the absorp and may b ctor structu ect to the 1 patent a rgy band d 13 of Lock of a barrie t interface ition of an rface from barrier/co an absorp in contrast oy of a ba ] and [006 bsorption tion layer e aligned re in whic Count, is re reprodu iagram heed ‘499 r layer fro (junction) alloy of a one inter ntact tion layer to Fig. 13 rrier layer 2]. , h a ced m . face 302 of is Interference No. 105,960 Caltech v. Lockheed Martin 18 17. Caltech specifically describes: “[T]he barrier layer [306, shown in Figs. 3A-3B] comprises an alloy of AlAsSb, where the Molar concentration of As increases as one moves from left to right in the illustration. For example, at the beginning of the barrier layer, at the junction with the absorption 5 layer, the concentration of As may be zero, so that the alloy composition begins with AlSb. At the other side of the barrier [layer] next to the contact layer, the Molar concentration of As may be 10%. These concentration levels serve merely as an example, and other embodiments may employ different levels of As. 10 By increasing the Molar concentration of As in the barrier layer as one moves from the junction with the absorption layer to the junction with the contact layer, better matching of the valence band is achieved as indicated in FIG. 3B.” 15 Ex. 2038 at 2:59-3:4 (emphasis added). 18. In view of FF 12-17, Caltech discloses grading the composition of an alloy of the barrier layer of an nBn detector structure, i.e., changing concentration 20 levels of an alloy (concentration gradient) within the barrier layer of an nBn detector structure. Ex. 2038 at 2:59-3:4, Figs. 3A-3B. B. ANALYSIS 1. 25 As an initial matter, we reject Caltech’s approach to challenging Lockheed’s claims on written description grounds predicated upon new matter. Caltech alleges that because the descriptions of Figures 13 and 14 recited in the Lockheed ‘499 application was not present verbatim in Lockheed’s provisional application No. 60/880,580 (Ex. 2002), that description constitutes new matter and somehow lacks 30 written description and enablement support for the limitation: “barrier layer comprising a concentration gradient” as recited in Claims 45-47. Paper 22 at 8:6- Interference No. 105,960 Caltech v. Lockheed Martin 19 9. As correctly recognized by Lockheed, Caltech attempts to challenge the priority date and the benefit accorded to the Lockheed ‘499 application with respect to the disclosure of grading the barrier layer. Paper 43, Opposition at 11:14-30. However, Caltech’s attempt is misplaced for several reasons. First, the only appropriate specification for the determination of adequate 5 written descriptive support is the specification in which the involved claims form a part, Lockheed’s involved application 13/344,499 (“Lockheed ‘499 application”). See Reiffin v. Microsoft Corp., 214 F.3d 1342, 1346 (Fed. Cir. 2000). Second, having failed to raise a challenge to Lockheed’s accorded benefit of Lockheed ‘580 provisional application (Ex. 2036) in Caltech Motion 2 (Paper 21), 10 which was denied, Caltech cannot raise this issue in the context of a motion limited only to a written description and enablement under 35 U.S.C. § 112, first paragraph with respect to Lockheed ‘499 application. Third, with respect to the merits of Caltech’s allegation of new matter (Paper 22 at 8:6-9), we agree with Lockheed that Figures 13 and 14 are depicted in both 15 the Lockheed ‘499 application and its ‘580 provisional application, and both include the statement that “alloys are graded at barrier interfaces in these respective figures.” Paper 43, Opposition at 12:4-25; Ex. 2001 at Fig. 13; Ex. 2002 at p. 29. For example, the Lockheed ‘580 provisional also describes that “by grading the composition of the barrier to absorber and contact interfaces, the spikes 20 at the heterointerfaces are eliminated,” and supports the claimed subject matter of Lockheed ‘499 application claims at issue in this interference. Ex. 2002 at p. 29. Likewise, we note that Claims 45-47 of Lockheed’s involved application were copied from Caltech ‘411 patent, and thus, Lockheed Claims 45-47 must be interpreted in the context of the specification of the Caltech ‘411 patent for 25 purposes of determining compliance with the written description requirement of 35 Interference No. 105,960 Caltech v. Lockheed Martin 20 U.S.C. § 112, first paragraph. Agilent Tech., Inc. v. Affymetrics, Inc., 567 F.3d 1366, 1375 (Fed. Cir. 2009) (“[W]hen a party challenges a written description for the interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language”). Paper 22, 2:15- 20; Ex. 2035 at p. 7. Consequently, any attempt by Caltech to rely on the 5 prosecution history of the Caltech ‘411 patent in analyzing the written description of Lockheed ‘499 application is improper and is misplaced, as correctly recognized by Lockheed. Paper 43, Opposition at 12:27-31, 13:1-24. 2. 10 In order to satisfy the written description requirement under 35 U.S.C. § 112, first paragraph, the specification must convey with reasonable clarity to those of ordinary skill in the art that as of the filing date of the application the inventor disclosed the claimed invention. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563- 64 (Fed. Cir. 1991); see also Pandrol USA, LP v. Airboss Ry. Products, Inc., 424 15 F.3d 1161, 1165 (Fed. Cir. 2005). The purpose of the written description requirement is to prevent applicants from later asserting that they invented that which they did not. Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003). However, the description does not have to be in the exact same words, in ipsis verbis, as the language at issue in the corresponding claim. In 20 re Wertheim, 541 F.2d 257, 265 (CCPA 1976); In re Lukach, 442 F.2d 967, 969 (CCPA 1971). The written description requirement of an invention is separate and distinct from the enablement requirement. Vas-Cath, 935 F. 2d at 1564. “The enablement requirement is satisfied when one skilled in the art, after reading the specification, 25 could practice the claimed invention without undue experimentation.” AK Steel Interference No. 105,960 Caltech v. Lockheed Martin 21 Corp. v. Sollac and Ugine, 344 F.3d 1234, 1244 (Fed. Cir. 2003). “The specification need not explicitly teach those in the art to make and use the invention; the [enablement] requirement is satisfied if, given what they already know, the specification teaches those in the art enough that they can make and use the invention without undue experimentation.” Amgen Inc. v. Hoechst Marion 5 Roussel, Inc., 314 F.3d 1313, 1334 (Fed. Cir. 2003). “It is unnecessary to spell out every detail of the invention in the specification; only enough must be included to convince a person of skill in the art that the inventor possessed the invention and to enable such a person to make and use the invention without undue experimentation.” LizardTech v. Earth Resource Mapping, Inc., 424 F.3d 1336, 10 1345 (Fed. Cir. 2005). The status quo of an interference is presumed correct. A party wishing to change the status quo may be authorized to file a substantive motion under 37 C.F.R. §41.212(a) to effect that change. As the moving party, Caltech bears the burden of proof to demonstrate entitlement to the relief requested. 37 C.F.R. § 15 41.121(b). To be sufficient, a motion must provide a showing, supported with appropriate evidence, such that, if unrebutted, it would justify the relief sought. 37 C.F.R. § 41.208(b). The applicable standard of proof is by a preponderance of the evidence. Bosies v. Benedict, 27 F.3d 539, 541-42 (Fed. Cir. 1994). 20 3. Caltech has identified a limitation of Lockheed Claims 45-47 said not to be described by Caltech’s written description and conveyed with reasonable clarity to those skilled in the art that the inventor was in possession of: “a barrier layer comprising a concentration gradient.” Paper 22, pp. 1-11. 25 Interference No. 105,960 Caltech v. Lockheed Martin 22 Citing Agilent, 567 F.3d at 1376, Caltech argues that Lockheed Claims 45- 47 were copied from Caltech’s involved patent and therefore must be construed in light of Caltech’s written description. Caltech acknowledges the “barrier layer comprising a concentration gradient” describes the actual barrier layer of Caltech’s disclosure, not just its edges, or its interface with the adjacent absorber and contact 5 layers. Paper 22 at 4:22-23. Caltech further acknowledges “the barrier layer is in between the absorption layer and the contact layer, indicated by label 306” shown in Figs. 3A-3B of Caltech, and is used to provide a barrier to the majority carriers. Paper 22 at 5:21-22 (citing Ex. 2038 at 2:53-54); and FF 12-17. Nevertheless, when read in light of Caltech’s disclosure, Caltech contends 10 that its written description compels a construction of: (1) the term “barrier layer” as the “layer in between the absorption layer and the contact layer and excluding the region near the junction between absorption layer and the barrier layer” or the “layer in between the absorption layer and the contact layer and excluding the interface area,” (2) the term “concentration gradient” as a “Molar concentration of 15 at least one alloy changing across the [barrier] layer,” and (3) the phrase “barrier layer comprising a concentration gradient” as a “Molar concentration of at least one alloy changing across the [barrier] layer in between the absorption layer and the contact layer and excluding the interface area.” Paper 22 at 4-7. We disagree with Caltech. Pending claims in interference proceedings are 20 given their broadest reasonable construction in a manner consistent with Agilent, i.e., in light of Caltech’s disclosure. Claim terms are also accorded their ordinary and accustomed meaning as would be understood by one of ordinary skill in the art. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc). In some cases, as here, the ordinary meaning of claim language as understood by a 25 person of skill in the art may be readily apparent even to lay judges, and claim Interference No. 105,960 Caltech v. Lockheed Martin 23 construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words. Phillips v. AWH Corp., 415 F.3d at 1314. This means that the words of the claims are given their plain meaning unless that meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Nevertheless, care must be exercised as there is an 5 important distinction between interpreting claims in light of the specification and reading limitations into the claims from the specification. Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). Limitations appearing in the specification but not recited in the claim must not be read into the claim. E- Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). We are 10 also mindful that our reviewing court has repeatedly cautioned against limiting claims to the preferred embodiment. Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 93 USPQ2d 1873, 1876 (Fed. Cir. 2010). Indeed, it is inappropriate to limit the claim to an embodiment where the claim language is broader than the language describing the embodiment. Superguide Corp. v. DirecTV Enterprises, Inc., 358 15 F.3d 870, 875 (Fed. Cir. 2004) (A particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment). At the outset, we note that there is no language in any of the Lockheed Claims 45-47 that expressly excludes any interface area between absorption and 20 contact layers from a barrier layer. The plain language of Lockheed Claims 45-47 simply requires “a barrier layer” and that “barrier layer” according to Caltech’s specification refers to the entirety of a layer between the absorption layer and the contact layer, indicated by label 306 shown in Figs. 3A-3B of Caltech, including its edges or interfaces, i.e., barrier/contact interface (junction) and barrier/absorber 25 interface (junction). Ex. 2038 at 2:61-65; Figs. 3A-3B; and FF 13-18. We find Interference No. 105,960 Caltech v. Lockheed Martin 24 nothing in Caltech’s specification indicating barrier interfaces, i.e., barrier/contact interface (junction) and barrier/absorber interface (junction), are excluded from and are not part of the “barrier layer.” Indeed, Caltech even acknowledges that the “barrier layer comprising a concentration gradient” describes the actual barrier layer, not just its edges, or its interface with the adjacent absorber and contact 5 layers. Paper 22 at 4:22-23. Accordingly, we reject Caltech’s proffered construction of the term “barrier layer” and construe that term to mean “the layer of material between the absorption layer and the contact layer of an nBn-type photo detector” – that is consistent with Caltech’s own specification. With respect to the term “concentration gradient” in the context of written 10 description, we find no explicit or special definition from Caltech’s specification. Nevertheless, Caltech’s specification describes the “concentration gradient” in the context of Fig. 3A as a “Molar concentration” level or simply concentration level of an alloy forming a barrier layer that changes or increases as the barrier layer is grown at the beginning of the barrier layer, at the junction with the absorption layer 15 until the end of the barrier, i.e., at the other side of the barrier layer next to the contact layer. Ex. 2038 at 2:59-3:4; and FF 12-18. However, there is nothing in Caltech’s specification indicating that such concentration change be linear or continuous across the barrier layer. Caltech’s specification further describes these concentration levels in context of Fig. 3A of Caltech serve merely as an example, 20 and other embodiments may employ different concentration levels of one or more alloys. Ex. 2038 at 2:66; and FF 17. Nor do we find any language in Lockheed Claims 45-47 that expressly requires such a “concentration gradient” must be across the “barrier layer” as proffered by Caltech. Paper 22 at 7:6-7. Rather, the plain language of Lockheed 25 Claims 45-47 simply requires the “barrier layer” to comprise a “concentration Interference No. 105,960 Caltech v. Lockheed Martin 25 gradient” and that “concentration gradient” can be present anywhere within the “barrier layer” including, for example: (1) across the barrier layer as proffered by Caltech, or alternatively, (2) at least one of (or both) an interface between the barrier and absorption layers and an interface between the barrier and contact layers, as described by Lockheed’s specification and further defined by Lockheed’s 5 dependent claims, for example, Claims 54-55. “It is common, and often permissible, for particular claims to pick out a subset of the full range of described features, omitting others.” ScriptPro, LLC v. Innovation Assocs., Inc., __ F.3d __, No. 2013-1561, slip op. at 7–8 (Fed. Cir. Aug. 6, 2014). Caltech’s specification does not indicate that the particular location 10 of the “concentration gradient” within the “barrier layer” is considered an essential element of the invention. C.f. Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998). An applicant for patent “is generally allowed claims, when the art permits, which cover more than the specific embodiment shown.” In re Vickers, 141 F.2d 522, 525 (CCPA 1944); see also Ethicon Endo-Surgery, Inc. 15 v. U.S. Surgical Corp., 93 F.3d 1572, 1582 n.7 (Fed. Cir. 1996). In this context, and given that Caltech’s “concentration gradient” predictably could be included or placed across the barrier layer as shown, for example, in Figs. 3A-3B of Caltech’s disclosure (Ex. 2038 at 2:61-65; Figs. 3A-3B; and FF 13-18), or at various locations within the barrier layer including at an interface between the 20 barrier and absorption layers and an interface between the barrier and contact layers, as shown, for example, in Fig. 2 and Fig. 13 of Lockheed’s disclosure (Ex. 2001 at ¶¶[0009], [0024], [0033]-[0034], [0060], [0062]; and FF 1-12), we find Lockheed’s involved application provides written description for a limitation: “barrier layer comprising a concentration gradient” as recited in Claims 45-47. We 25 also find the description in Lockheed’s specification reasonably conveys to one of Interference No. 105,960 Caltech v. Lockheed Martin 26 ordinary skill in the art that Lockheed was in possession of the claimed subject matter. For the foregoing reasons, Caltech has failed to prove that Lockheed Claims 45-47 are unpatentable under 35 U.S.C. § 112, first paragraph, for lacking written description and enablement support for a “barrier layer comprising a concentration 5 gradient.” Therefore, Caltech Motion 3 (Paper 22) is DENIED. V. CALTECH MOTION 4 (PAPER 22) FOR LACK OF PATENTABILITY 10 Caltech Motion 4 (Paper 21) moves for judgment that Claims 26-29, 36, 37, 39, 43-47, 49, and 53-55 of the Lockheed ‘499 application (Paper 7; Ex. 2001) are unpatentable under 35 U.S.C. § 103(a) over prior art. As the moving party, Caltech bears the burden of proving by a preponderance of the evidence that Claims 26-29, 36, 37, 39, 43-47, 49, and 53-55 of Lockheed ‘499 application are 15 unpatentable over prior art. 37 C.F.R. §§ 41.121(b) and 41.208(b); see also Bosies v. Benedict, 27 F.3d 539, 541-42 (Fed. Cir. 1994). Specifically, Caltech argues that Claims 26-29, 36, 37, 39, 43-47, 49, and 53-55 of Lockheed ‘499 application (Paper 7; Ex. 2001) are unpatentable under 35 U.S.C. § 103(a) as rendered obvious over two different combinations of prior art, 20 including: (1) Maimon, U.S. Patent Publication No. 2007/0215900 (Maimon ‘900; Ex. 2003) and Lin, U.S. Patent No. 6,603,184 (Lin ‘184; Ex. 2004); and (2) Maimon ‘900 (Ex. 2003), Federico Capasso, Compositional Graded Semiconductors and Their Device Applications, 16 ANN. REV. MATER. SCI. 263 (1986) (Capasso; Ex. 2010), and White, U.S. Patent No. 4,679,063 (White ‘063; 25 Interference No. 105,960 Caltech v. Lockheed Martin 27 Ex. 2024).5 Paper 23, pp. 1-25 & APPENDIX 3A-3B (claim charts). However, Caltech has not explained why the cited prior art, including Maimon ‘900 (Ex. 2003), Lin ‘184 (Ex. 2004), Capasso (Ex. 2010), and White ‘063 (Ex. 2024), does not render obvious any of Caltech’s own Claims 1-6 as required by 37 C.F.R. §41.207(c). Instead, Caltech simply incorporates by reference Caltech Motion 3 5 (Paper 22) and Caltech Motion 5 (Paper 25) for arguments that the prior art identified in Caltech Motion 4 (Paper 23) does not apply to Caltech’s own Claims 1-6 of Caltech ‘411 patent (Paper 13; Ex. 1002), i.e., Caltech’s own Claims 1-6 are directed to subject matter that is patentably distinct from Claims 26-29, 36, 37, 39, 43-47, 49, and 53-55 of Lockheed ‘499 application (Paper 7; Ex. 2002). Paper 23, 10 p. 24. In its opposition, Lockheed responds that: (1) Caltech’s incorporation by reference is not permitted under S.O. ¶ 106.2 and (2) Caltech has failed to explain why the prior art identified in Caltech Motion 4 (Paper 23) is not equally applicable to Caltech’s own Claims 1-6 of Caltech ‘411 patent (Paper 13; Ex. 15 1002) corresponding to the Count. Paper 44, p. 4. In addition, Lockheed argues Caltech has incorrectly construed all of Lockheed’s claims corresponding to the Count, mischaracterized both the cited prior art and Lockheed’s disclosure and, 5 In Appendix 3B of Caltech Motion 4 (Paper 23), Lin ‘184 (Ex. 2004) and Capasso (Ex. 2010) are also listed in combination with Maimon ‘900 (Ex. 2003) and White ‘063 (Ex. 2024). However, Lin ‘184 (Ex. 2004) is not relied upon for a disclosure of any limitation of Claims 45-47, 49, and 54-55 of Lockheed ‘499 application. As such, Lin ‘184 is considered redundant and is not needed for the combination of Maimon ‘900 (Ex. 2003), Capasso (Ex. 2010), and White ‘063 (Ex. 2024). Likewise, Capasso is also cited for a disclosure of “band gap grading [which] allows one to literally design and tailor the important transport properties to a given application” as similarly disclosed by White ‘063 (Ex. 2024 at 7:1-24, 9:6-12, and Fig. 2). As such, Capasso is also considered redundant and is not needed for the §103 rejection. Interference No. 105,960 Caltech v. Lockheed Martin 28 consequently, failed to establish obviousness of Lockheed’s Claims 26-29, 36, 37, 39, 43-47, 49, and 53-55. Paper 44, pp. 1-18. In its reply, Caltech responds all the prior art cited by Caltech is not applicable to Caltech’s own Claims 1-6 of the Caltech ‘411 patent because the prior art teaches grading at an interface between absorption/barrier layers and 5 between barrier/contact layers, whereas Caltech Claims 1-6 are directed to a “barrier layer comprising a concentration gradient.” Caltech concedes, however, that “[w]hile the applicability of the prior art to the [Caltech] ‘411 patent may be an interesting aside, it is not relevant to this motion, nor does it change the fact that all of the prior art is applicable to the [Lockheed] ‘499 application.” Paper 51 at 2 10 (emphasis added). Below are our findings of facts regarding the disclosures of Lockheed ‘499 application and Caltech ‘411 patent, the relevant prior art, analysis and conclusion of law regarding patentability of each of the contested claims 26-29, 36, 37, 39, 43- 47, 49, and 53-55 of Lockheed ‘499 application as well as the presumption under 15 37 C.F.R. §41.207(c). A. ADDITIONAL FINDINGS OF FACTS 1. Basic P-N Junction & nBn Technology 20 19. P-N junctions are elementary “building blocks” of most semiconductor devices, including photo detectors. We understand that such a p-n junction is simply an interface between two layers of semiconductor material, p- type and n-type, and, if illuminated, converts light into current. Ex. 1006 and Ex. 1008. A depletion region is formed or created when charge carriers (electrons and 25 holes) are swept away from the p-n junction by absorption of an incident photo, Interference No. 105,960 Caltech v. Lockheed Martin 29 leaving none to carry a current. Ex. 1006. The total current is the sum of the dark current (current that is generated in the absence of light) and the photocurrent, so the dark current must be minimized in order to maximize the sensitivity of a device. Ex. 1008. 20. In contrast to p-n junction type depletion-region devices, an nBn-type 5 photo detector is designed to eliminate such a p-n junction and associated junction leakage. In particular, an nBn-type photo detector does not exhibit a depletion region to further reduce the dark current generated in the semiconductor junction, as described, for example, generally in Maimon, U.S. Patent Publication No. 2007/0215900, now issued as U.S. Patent No. 7,687,871 (Maimon ‘900; Ex. 2003 10 and Ex. 2012). These nBn-type photo detectors are inherently depletion-less, and, as such, are also known as “depletion-less nBn-type photo-detector”. Ex. 2003 and Ex. 2012 at 3:5-7. Prior Art 15 21. Maimon ‘900 (Ex. 2003) was acknowledged and described in detail in the Background Section of both Caltech ‘411 patent and Lockheed ‘499 application, and was also cited and considered by the Examiner during the prosecution of both Caltech ‘411 patent and Lockheed ‘499 application. Ex. 2001 at 1:26-62; Ex. 2038 at ¶[0029]. 20 22. Maimon ‘900 (Ex. 2003) discloses each nBn detector structure comprises a sequence of: (i) an n-doped semiconductor photo absorbing layer, (ii) a middle barrier layer, and (iii) an n-doped semiconductor contact layer. Ex. 2012 at Abstract; 2:39-55; and Figs. 1A-1B. According to Maimon ‘900, the barrier layer disposed between the photo absorbing layer and the contact layer exhibits a 25 thickness sufficient to prevent tunneling of majority carriers from the photo Interference No. 105,960 Caltech v. Lockheed Martin 30 absorbing layer to the contact layer. Ex. 2012 at 2:49-51. Such a barrier layer is also designed to have no offset for minority carriers and a band gap barrier for majority carriers. Thus, current is almost exclusively by minority carriers. Ex. 2012 at 2:60-61. 5 2. Lockheed’s Involved Application (Lockheed ‘499 Application) 23. Lockheed ‘499 application acknowledges nBn photo-detectors and their structures were known in the prior art, as disclosed by Maimon ‘900 (Ex. 2003). Ex. 2001 at ¶[0029]. 10 24. As discussed in connection with FF 3-12, Lockheed further discloses grading the composition of an alloy at least part of the barrier layer of an nBn detector structure, including, for example, at interfaces between the barrier layer and the photo absorption layer and the contact area. Ex. 2001 at ¶¶[0009], [0024], [0033]-[0034], [0060], and [0062]. 15 3. Caltech’s Involved Patent (Caltech ‘411 Patent) 25. Caltech ‘411 patent also acknowledges that nBn photo-detectors and their structures were known in the prior art, as disclosed, for example, by Maimon 20 in an article entitled “nBn detector, an infrared detector with reduced dark current and higher operating temperature,” published in Applied Physics Letters, (Maimon; Ex. 2013). Ex. 1002 at 1:26-31. 26. As discussed in connection with FF 13-18, Caltech further discloses grading the composition of an alloy of the barrier layer of an nBn detector 25 structure, i.e., changing concentration levels of an alloy (concentration gradient) Interference No. 105,960 Caltech v. Lockheed Martin 31 within the barrier layer of an nBn detector structure. Ex. 2038 at 2:59-3:4, Figs. 3A-3B. B. ANALYSIS 5 1. Claim Construction In determining patentability over the prior art, the name of the game is the claim. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Claim terms of an 10 involved patent in an interference are given their broadest reasonable construction as they would be understood by one of skill in the art in light of the specification. Rolls-Royce PLC v. United Technologies Corp., 603 F.3d 1325, 1330 (Fed. Cir. 2010). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer or 2) when the patentee 15 disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). For purposes of a patentability or invalidity challenge under 35 U.S.C. §§ 102 and 103, the copied claims must be interpreted in light of the host disclosure, i.e., Lockheed’s disclosure and file history. Agilent Tech., Inc. v. 20 Affymetrics, Inc., 567 F.3d 1366, 1375 (Fed. Cir. 2009) (“[W]hen a party challenges a claim’s validity under §§ 102 and 103 … the Board must interpret the claim in light of the specification in which it appears”).6 Paper 44 at 5:11-14. 6 As per Agilent, the Federal Circuit requires copied claims to be interpreted differently depending on whether those claims are challenged under 35 U.S.C. § 112, first paragraph or under 35 U.S.C. §§ 102 and 103. For purposes of a written description challenge under 35 U.S.C. § 112, first paragraph, copied claims must be interpreted in light of the originating disclosure. In contrast, for purposes of a patentability or invalidity challenge under 35 U.S.C. §§ 102 and 103, the same Interference No. 105,960 Caltech v. Lockheed Martin 32 We will look to Lockheed’s disclosure and file history to see if they provide a definition for claim terms. Otherwise, we give them their “ordinary and customary meaning” in the light of the specification that “the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 5 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). In the present interference, analysis of the unpatentability assertions depends on the meaning of several claim terms and limitations from independent claims 26, 36, 43, 45, and 47 of Lockheed ‘499 application corresponding to the Count. Paper 1, Declaration-Bl. R. 203(d) at p. 4. Each of these claims corresponding to 10 the Count relates to grading the composition of a barrier (B) layer disposed between a photo absorbing layer and a contact layer within an nBn detector structure. For Claims 45 and 47: “the barrier layer comprising a concentration gradient.” Paper 7 at 4-5. 15 For Claim 26: “where the barrier layer is graded with a first grading at a first interface area between said barrier layer and said contact layer and graded with a second grading at a second interface area between said barrier layer and said photo absorbing layer such that 20 the first grading creates a graded transition from the minority carrier band edge of the barrier layer to the minority carrier band edge of the contact layer; and copied claims must be interpreted in light of the host disclosure in which they are a part. As a result of claim construction based on different disclosures, the same copied claims with exactly the same wordings can mean different things depending on the “written description” challenge or the “patentability” or “invalidity” challenge. Fortunately, however, the plain reading of Caltech Claims 1-6 and Lockheed copied Claims 45-47 and their claim construction do not vary significantly from Caltech’s disclosure to Lockheed’s disclosure. Interference No. 105,960 Caltech v. Lockheed Martin 33 the second grading creates a graded transition from the minority carrier band edge of the photo absorbing layer to the minority carrier band edge of the barrier layer.” Paper 7 at 3. For Claim 36: “where the barrier layer is graded with a first grading at a first 5 interface area between said barrier layer and said contact layer such that the first grading creates a graded transition from the minority carrier band edge of the barrier layer to the minority carrier band edge of the contact layer.” Paper 7 at 3-4. For Claim 43: “where the barrier layer is graded with a grading that creates a graded transition from the minority carrier band edge of the barrier layer to the 10 minority carrier band edge of the contact layer and also creates a graded transition from the minority carrier band edge of the photo absorbing layer to the minority carrier band edge of the barrier layer.” Paper 7 at 4. The disputed terms are: (1) “barrier layer”, (2) “concentration gradient”, (3) “barrier layer comprising a concentration gradient”, (4) “grading”, (5) “graded 15 with a first grading” or “graded with a grading”, and (6) “grading at [an] interface” as recited in Claims 26, 36, 43, 45, and 47 of Lockheed ‘499 application corresponding to the Count. As per Agilent, these disputed terms are to be construed in light of the host disclosure, i.e., Lockheed’s disclosure and file history, and not Caltech’s disclosure and its file history. 20 At the outset, we note that neither Caltech nor Lockheed alleges that the inventors of Lockheed ‘499 application gave any claim term a special definition different from its recognized meaning to one with ordinary skill in the art. However, rather than proffering a specific construction of these disputed terms, Caltech takes the position that because the Lockheed ‘499 application never 25 describes “concentration gradient” outside of the claims and only describes what Caltech has characterized as “grading an alloy at the interface of the Interference No. 105,960 Caltech v. Lockheed Martin 34 absorber/barrier and/or barrier/contact layers,” the proper construction of these disputed terms should be limited to only grading at an interface between layers. Paper 23 at 21-22. Lockheed opposes Caltech’s wholesale approach to claim construction and proffers its own construction, which we will address each claim term identified by Lockheed in turn. 5 1. “Barrier Layer” Lockheed construes the claim term “barrier layer” to mean a layer of material disposed between the absorber layer and the contact layer in a depletion- less, nBn-type photo-detector. Paper 44 at 7-8. Lockheed contends his claims pertain to alloy grading in the barrier layer of depletion-less nBn-type photo-10 detectors, i.e., minority-carrier devices having an n-type absorber, an n-type contact, and a barrier (B) layer disposed between the absorber and the contact to prevent the flow of majority carriers between the absorber and the contact without causing a depletion region. Id. Lockheed argues the term “barrier layer” therefore encompasses all parts of the barrier (B) layer, from the absorber junction to the 15 contact junction. Id. Caltech replies that Lockheed’s proffered construction is incorrect and ignores Lockheed’s own specification and claims which further require an “interface area” that is “between” layers. Paper 51 at 4. According to Caltech, the term “barrier layer” does not encompass all parts of the barrier layer and 20 necessarily excludes particular interface areas that are “between” layers, such as “a first interface area between said barrier layer and said contact layer” and “a second interface area between said barrier layer and said photo absorbing layer” as recited, for example, in Claim 26 of Lockheed ‘499 application. Id. Upon reviewing the host disclosure, i.e., Lockheed’s disclosure and file 25 history as per Agilent, we do not find an explicit or special definition for the claim Interference No. 105,960 Caltech v. Lockheed Martin 35 term “barrier layer.” Therefore, we resort to its ordinary and customary meaning as would be understood by one of ordinary skill in the art at the time of the invention. See Phillips, 415 F.3d at 1312. The ordinary and customary meaning of the claim term “barrier layer” can be evidenced by a variety of sources, including “the words of the claims themselves, the remainder of the specification, the 5 prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Phillips, 415 F.3d at 1314. Typically, it is the use of the words in the context of the written description and customarily by those skilled in the relevant art that accurately reflects both the “ordinary” and the “customary” meaning of the terms in the 10 claims. Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003). The claims, of course, do not stand alone. Rather, they are part of a fully integrated written instrument, consisting principally of a specification that concludes 15 with the claims. For that reason, claims must be read in view of the specification . . . . [T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. 20 Phillips, 415 F.3d at 1321 (citations omitted). In other words, Lockheed’s own specification is the best guide to the meaning of claim terms. As described in connection with Fig. 2 of Lockheed’s specification, the “barrier layer” is disposed between the photo absorbing layer and the contact layer. 25 Ex. 2001 at ¶[0009]; FF 6. The “barrier layer” is grown on the surface of the photo absorbing layer, via a known growth process, until typically, no more than two thousand angstroms. Ex. 2001 at ¶[0034]; FF 7-8. In addition, the composition of the barrier layer can be graded differently at barrier interfaces, i.e., barrier/contact Interference No. 105,960 Caltech v. Lockheed Martin 36 interface and barrier/absorber interface in order to make design more robust to variations of alloys in the growth process. Ex. 2001 at ¶[0062]; FF 9. We find nothing in Lockheed’s specification indicating these barrier interfaces, i.e., barrier/contact interface and barrier/absorber interface, are excluded from and are not part of the “barrier layer.” Accordingly, we find these barrier interfaces are all 5 parts of the barrier layer, from the absorber junction to the contact junction, as proposed by Lockheed. Because Lockheed’s claim construction is consistent with the specification of the Lockheed ‘499 application, we agree with Lockheed’s claim construction that “barrier layer” is defined to mean a layer of material disposed between the absorber layer and the contact layer in a depletion-less nBn-10 type photo-detector including the interface between the barrier layer and the absorber and contact layers. 2. “Concentration Gradient” Neither Caltech nor Lockheed proffers claim construction for the claim term “concentration gradient” in the context of the host disclosure, i.e., Lockheed’s 15 disclosure and file history as per Agilent.7 Likewise, neither party offers the plain and ordinary meaning of “concentration gradient.” 7 In Motion 3 (Paper 22) for lack of written description, Caltech construes the term “concentration gradient” to mean a “Molar concentration of at least one alloy changing across the [barrier] layer.” Paper 22, p. 7. Lockheed responds that the same term should be construed to mean “the concentration of an alloy changing in the [barrier] layer.” Paper 43, p. 8. However, for purposes of written description analysis, these claim constructions are improper because they are interpreted in view of Caltech ‘411 patent, and not the host disclosure, i.e., Lockheed’s disclosure as per Agilent. Likewise, Caltech’s attempt to impute the prosecution history of Caltech ‘411 patent to Lockheed ‘499 application is also improper. Paper 22, p. 9, l. 17 – p. 10, l. 5. Our Standing Order, S.O. ¶106.02 prohibits incorporation by reference and combined papers. Nevertheless, both Caltech’s proffered claim construction and Lockheed’s claim construction can be insightful Interference No. 105,960 Caltech v. Lockheed Martin 37 Upon reviewing Lockheed’s specification, we do not find an explicit or special definition for the claim term “concentration gradient.” Therefore, we resort to its ordinary and customary meaning as would be understood by one with ordinary skill in the art. See Phillips, 415 F.3d at 1312. The ordinary and customary meaning of the claim term “concentration gradient” can be evidenced 5 from Lockheed’s specification. As described in connection with Fig. 13 of Lockheed’s specification, the composition of the barrier layer can be graded differently at barrier interfaces, i.e., barrier/contact interface and barrier/absorber interface in order to make design more robust to variations of alloys in the growth process. Ex. 2001 at ¶[0062]; FF 10-11. In other words, the concentration of an 10 alloy varies or changes during the growth process of a barrier layer. As such, we construe the claim term “concentration gradient” to mean “concentration of an alloy changing in and along a length (thickness) of the barrier layer.” We note, however, that “concentration gradient” can be present at any particular location within the “barrier layer” including, for example, at least one of (or both) an 15 interface between the barrier and absorption layers and an interface between the barrier and contact layers, as described in Lockheed’s specification (FF 3-12, 23- 24) and further recited in Lockheed Claims 54-55. 3. “Barrier Layer Comprising a Concentration Gradient” The transitional term “comprising” is a legally operative claim term that is 20 synonymous with “including” and is inclusive or “open-ended and does not exclude additional, unrecited elements or method steps.” See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004); Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003) (“The transition ‘comprising’ in a and instructive for claim construction determination in the context of Motion 4 (Paper 23) for lack of patentability. Interference No. 105,960 Caltech v. Lockheed Martin 38 method claim indicates that the claim is open-ended and allows for additional steps.”); and Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, (Fed. Cir. 1997) (“Comprising” is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.); see also M.P.E.P. § 2111.03. 5 Based on our claim construction of the term “barrier layer” and “concentration gradient” and the inclusive nature of the transitional term “comprising”, we construe the claim term “barrier layer comprising a concentration gradient” to mean “the layer of material disposed between the absorber layer and the contact layer of a depletion-less nBn-type photo detector 10 including an alloy whose concentration changes in the layer along a length (thickness) of that layer between the absorber layer and the contact layer.” We find such a construction is consistent with Lockheed’s specification and, likewise, is based on and fully supported by the disclosures of both Lockheed ‘499 application and Caltech ‘411 patent. 15 4. “Grading”, “Graded with a First Grading”, “Graded with a Grading”, and “Grading at [an] Interface” Neither Caltech nor Lockheed proffers claim construction for these claim terms in the context of the host disclosure, i.e., Lockheed’s disclosure and file history as per Agilent. Nevertheless, in some cases, as here, the ordinary meaning 20 of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words. See Phillips, 415 F.3d at 1314. For example, the term “interface” or “barrier interface” as used in Lockheed ‘499 application refers to a 25 heterointerface between the barrier layer and the absorber layer, or between the Interference No. 105,960 Caltech v. Lockheed Martin 39 barrier layer and the contact layer. Ex. 2001 at ¶[0062]. Therefore, the widely accepted meaning of the term “interface” or “barrier interface” is a place where the barrier layer and the absorber layer meet, or where the barrier layer and the contact layer meet. The remaining words such as “grading” or “graded” are given their plain meaning consistent with the construction of “concentration gradient” offered 5 above with respect to Lockheed ‘499 application. 2. Legal Standard for 35 U.S.C. § 103(a) Once the meaning of the claims is determined, the next step is to determine 10 whether the claim is obvious under 35 U.S.C. § 103(a). “Section 103 forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 15 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 20 (1966). See also KSR, 550 U.S. at 406-07 (“While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls.”). While the analysis under 35 U.S.C. § 103 allows flexibility in determining whether a claimed invention would have been obvious, “[w]e must still be careful not to allow hindsight reconstruction of references to 25 reach the claimed invention without any explanation as to how or why the Interference No. 105,960 Caltech v. Lockheed Martin 40 references would be combined to produce the claimed invention.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008). To reach a non- hindsight driven conclusion of obviousness in view of multiple references, there must be “some rationale, articulation, or reasoned basis to explain why the conclusion of obviousness is correct.” In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 5 2006). The reasoning is important “because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.” KSR 550 U.S. at 418-19. Caltech has determined, and Lockheed has agreed that a person of ordinary 10 skill in the art is one with at least a graduate degree in physics or at least 6 years of experience in the field of semiconductor fabrication, or an equivalent combination of education and experience. Paper 23, p. 22-23; Paper 44, p. 7. However, neither Caltech nor Lockheed provides expert testimony regarding the state of the art, i.e., nBn photo detector structure, the differences between the claimed subject matter 15 and the prior art, and the reason why the references would be combined to produce the claims of Lockheed ‘499 application. Turning now to all the contested Claims 26-29, 36, 37, 39, 43-47, 49, and 53-55 of Lockheed ‘499 application (Paper 7; Ex. 2001), these claims can be divided into two groups based upon the claimed subject matter: (1) Claims 45-47, 20 49, and 54-55 and (2) Claims 26-29, 36, 37, 39, 43-44, and 53. The claims of the first group include the “barrier layer comprising a concentration gradient” limitation (Claims 45-47, 49, and 54-55). The claims of the second group do not include the broad “barrier layer comprising a concentration gradient” limitation, but include specific, albeit different ways the barrier layer is compositionally 25 Interference No. 105,960 Caltech v. Lockheed Martin 41 graded at interfaces between the barrier layer and the photo-absorbing layer/contact layer (Claims 26-29, 36, 37, 39, 43-44, and 53). 3. We first address Claims 45-47, 49, and 54-55 of Lockheed ‘499 application. 5 Lockheed Claim 45 recites a detector comprising: “an absorption layer for generating electrons-hole pairs in response to absorbed photons, the absorption layer comprising a semiconductor having majority carriers and minority carriers; a barrier layer comprising a semiconductor adjacent to the 10 absorption layer to provide a barrier to the majority carriers, the barrier layer comprising a concentration gradient; and a contact layer comprising a semiconductor adjacent to the barrier layer; and where the detector has no substantial depletion layer.” 15 Paper 7; Ex. 2001, Claim 45 (emphasis added). Lockheed Claim 46 further recites “the absorption layer and the contact layer are n-type semiconductors so that the majority carriers are electrons and the minority carriers are holes.” Paper 7; Ex. 2001, Claim 46. 20 Lockheed Claim 49 further requires “the concentration gradient is configured to reduce minority carrier recombination by reducing the size of a carrier trap at an interface of the barrier and contact layers.” Paper 7; Ex. 2001, Claim 49. Lockheed Claims 54-55 further recite “the concentration gradient is present 25 at least one of [or both] an interface between the barrier and absorption layers and an interface between the barrier and contact layers.” Paper 7; Ex. 2001, Claims 54- 55. Interference No. 105,960 Caltech v. Lockheed Martin 42 In other words, Lockheed Claims 45-46, 49, and 54-55 are broad, and simply recite a basic nBn detector structure that comprises a sequence of: (i) an absorption layer, (ii) a middle barrier layer, and (iii) a contact layer, and that has no substantial depletion layer, known as “depletion-less nBn-type photo-detector,” coupled with a further distinction that the “barrier layer comprising a concentration 5 gradient” albeit that “concentration gradient” can be present anywhere within the “barrier layer” including, for example, at least one of (or both) an interface between the barrier and absorption layers and an interface between the barrier and contact layers. Lockheed Claim 47 is similar to Claim 45 in scope of coverage, except that 10 “the absorption layer, the barrier layer, and the contact layer each having a band for conduction of the minority carriers,” and that “the concentration gradient such that the band is aligned across the barrier layer and the contact layer.” Paper 7; Ex. 2001, Claim 47. 15 Caltech’s Contentions Caltech contends Claims 45-47, 49, and 54-55 of Lockheed ‘499 application are unpatentable under 35 U.S.C. § 103(a) over two different combinations of prior art: (1) the combination of Maimon ‘900 (Ex. 2003) and Lin ‘184 (Ex. 2004); and (2) the combination of Maimon ‘900 (Ex. 2003), White ‘063 (Ex. 2024), Capasso 20 (Ex. 2010), and Lin ‘184 (Ex. 2004).8 Paper 23 at 1-25 & Appendix 3A-3B (claim charts). 8 Lin ‘184 and Capasso (Ex. 2010) are further cited to support the second proposed combination. Paper 23 at 13:23-14:17. However, Lin ‘184 is only cited for a disclosure of the same photo detector having a barrier layer between absorber and contact layers as similarly disclosed by Maimon ‘900. Likewise, Capasso is also cited for a disclosure of “band gap grading [which] allows one to literally design Interference No. 105,960 Caltech v. Lockheed Martin 43 In particular, Caltech asserts that an nBn detector structure comprising a sequence of: (i) an n-doped semiconductor photo absorbing layer, (ii) a middle barrier layer, and (iii) an n-doped semiconductor contact layer, known as “depletion-less nBn-type photo-detector” was well known in the prior art as early as 2003, as evidenced from Maimon ‘900. Paper 23, pp. 9-11; Ex. 2001, ¶[0029]; 5 Ex. 2003 at Abstract, 2:39-55, 3:5-7, Figs. 1A-1B; Ex. 2014; and FF 1-4. According to Caltech, Maimon discloses a photodetector including a photo absorbing layer, a contact layer, and a barrier layer disposed between the absorber and contact layers, and configured to prevent majority transport. Paper 23 at 23:20-23. 10 Caltech does not expressly identify the differences between Maimon and Lockheed’s claims, but implies the differences reside in “the barrier layer comprising a concentration gradient.” Caltech asserts that grading the concentration of alloys at interfaces between layers in a semiconductor device was also well known in the prior art, as evidenced from Lin ‘184 or White ‘063.9 Paper 15 23 at 11-20. and tailor the important transport properties to a given application” as similarly disclosed by White ‘063 (Ex. 2024 at 7:1-24, 9:6-12, and Fig. 2). For purposes of brevity, only Maimon ‘900 and White ‘063 are needed for the second combination rejection. Both Lin ‘184 and Capasso (Ex. 2010) are considered redundant and need not be included for purposes of the § 103(a) rejection. Paper 23, Appendix 3B at 1-14. 9 In addition to Lin ‘184 (Ex. 2004) and White ‘063 (Ex. 2024), other prior art sources relied upon to show “grading the composition at the interfaces” between layers of a semiconductor device include: Shubert (Ex. 2009 and Ex. 2022), Capasso (Ex. 2010 and Ex. 2025), Lundstrom (Ex. 2011), Cheung (Ex. 2016), Frensley (2017), Chu (Ex. 2018), Forrest (Ex. 2019), Kroemer (Ex. 2020), Ruyven (Ex. 2021), Thompson (Ex. 2023), and Giboney (Ex. 2026). Paper 23, pp. 11-20. However, these references are considered duplicative and undue multiplicity; only Maimon ‘900 (Ex. 2003), White ‘063 (Ex. 2024) and Giboney (Ex. 2026) pertain Interference No. 105,960 Caltech v. Lockheed Martin 44 Caltech’s motion provides a limitation-by-limitation analysis explaining why each of the claim limitations is described by: (1) the combination of Maimon ‘900 and Lin ‘184, and (2) the combination of Maimon ‘900 and White ‘063. Paper 23 at 22:15-25:11. Appendix 3A to Caltech’s motion provides a claim chart identifying where each limitation of Claims 45-47, 49, and 54-55 of Lockheed 5 ‘499 application is disclosed by Maimon ‘900 and Lin ‘184. Paper 23 at Appendix 3A. Likewise, Appendix 3B to Caltech’s motion provides a claim chart identifying where each limitation of Claims 45-47, 49, and 54-55 of Lockheed ‘499 application is disclosed by Maimon ‘900 and White ‘063. Again, Caltech does not expressly identify the differences between Maimon and Lockheed Claims 45-47, 10 49, and 54-55, but implies a difference in the context of “the barrier layer comprising a concentration gradient.” Paper 23 at Appendix 3B. Lockheed does not dispute Caltech’s factual assertions regarding: (1) known nBn detector structures and (2) barrier interface grading in general. Paper 44 at 11:7-15. Rather, Lockheed’s opposition (Paper 44) is predicated upon: (1) 15 fundamental differences between depletion-region devices, as disclosed by Lin ‘184 and depletion-less, nBn devices, as disclosed by Maimon ‘900 and both the Caltech ‘411 patent and the Lockheed ‘499 application (Paper 44 at 12-14); (2) all the references identified by Caltech Motion 4 (Paper 23 at 11:11-18:1), including Lin ‘184, pertain to devices having depletion regions intentionally created through 20 or associated with traditional p-n junctions, which is the exact opposite of what is “depletion-less nBn detector structure” as disclosed by Lockheed ‘499 application. See Paper 44, p. 11 In contrast, all the references identified by Caltech in their Motion 4 (Paper 23), including Lin ‘184 (Ex. 2004) pertain to devices having depletion regions intentionally created through or associated with p-n junctions, which have a structure that is different from both Lockheed’s and Caltech’s claimed “nBn-type photo-detector.” Paper 23 at 11-20. Interference No. 105,960 Caltech v. Lockheed Martin 45 desired and taught with respect to an nBn-type photo detector (Paper 44 at 11:7-18; Ex. 2012 at 11:27-29); (3) as such, incorporating Lin ‘184 into Maimon ‘900 would not work or its intended purpose and would cause a depletion region to occur and render the barrier of the nBn-type photo detector useless, producing an inoperable device (Paper 44 at 15-18); and (4) there is no basis or articulated 5 reasoning to incorporate White ‘063 into Maimon ‘900 to arrive at the subject matter of Claims 45-47, 49, and 54-55 of Lockheed ‘499 application because White ’063 teaches away from grading barrier interfaces in depletion-less nBn device. Paper 44 at 12-15. 10 Maimon ‘900 and Lin ‘184 In particular, Lockheed argues Lin ‘184 teaches the advantages of grading interfaces of barriers that allow majority carrier flow and block minority carrier flow in a depletion region, p-n junction device. Paper 44 at 16 (citing Ex. 2004 at 7:24-29). Therefore, if this grading technique as disclosed by Lin ‘184 is applied 15 to depletion-less, nBn type devices as disclosed by Maimon ‘900 or Lockheed ‘499 application, we find the combination would be contrary to the subject matter of Maimon ‘900, as such, would not be operable as a depletion-less, nBn-type photo detectors as required by Lockheed’s claims. Ex. 2004 at 6:52-57 and 7:24-29. Caltech acknowledges the difference between the desired flow of majority 20 carriers as disclosed by Lin ‘184 and the desired flow of minority carriers as disclosed by the Lockheed ‘499 application, but nevertheless imputes one skilled in the art with a knowledge base sufficient would understand the problems and nevertheless make the combination of Maimon ‘900 and Lin ‘184. Paper 51 at 9:12-27. 25 Interference No. 105,960 Caltech v. Lockheed Martin 46 We disagree with Caltech. First, as correctly noted by Lockheed, Lin ‘184 teaches grading interfaces to reduce heterojunction discontinuities, such as spikes and wells, across the p-n junction. Ex. 2004 at 7:24-29. According to Lin ‘184, the blocking structures are barriers used to block the flow of minority carriers and grading at the interfaces as taught by Lin ‘184 “advantageously reduces any 5 barriers to majority carrier flow from the absorption region to the contact structure” as shown in Fig. 2B of Lin ‘184. Ex. 2004 at 6:52-57. In other words, Lin ‘184 teaches the exact opposite of the claimed subject matter of Lockheed ‘499 application, i.e., grading an interface area between the absorber and barrier layers, and/or an interface area between the barrier and contact layers in order to facilitate 10 minority carrier transport while continuing to inhibit or prevent majority carrier transport across the barrier. Ex. 2001 at Fig. 13, ¶¶[0024], [0062], Claims 26, 36, and 43. Based on Lin’s teachings, we find a person of ordinary skill in the art would not have had reason to follow the path set out by Lockheed claims because: (1) incorporating the grading interfaces of Lin ‘184 into an nBn-type photo 15 detector as disclosed by Maimon ‘900 would reduce the barrier structure of majority carrier transport that is contrary to the requirements of Lockheed claims, and (2) in doing so would cause depletion regions to occur and would render the barrier of the nBn-type photo detector useless, producing an inoperable device. Ex. 2004 at 6:52-57 and 7:24-29; see In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 20 1984) (finding no suggestion to modify a prior art device where the modification would render the device inoperable for its intended purpose). As such, we agree with Lockheed that Lin ‘184 teaches away from making the combination as proposed by Caltech. Our holding is consistent with the Examiner’s conclusion that, during the 25 prosecution of Lockheed ‘499 application, Lin ‘184 was: Interference No. 105,960 Caltech v. Lockheed Martin 47 unsuitable for combination with Maimon because Lin teaches a photodetector having “a p-n junctions absorption region.” (Lin at Para. [0021]) Applicants respectfully note that a p-n junction inherently has a depletion region at the boundary between the p-5 type and n-type semiconductors. Maimon, by contrast, is related to barrier-type (nBn, pBp, etc.) devices that do not have substantial depletion regions. The underlying physical properties and operating principles of depletion-region devices and depletion-less devices are fundamentally different. 10 Ex. 2005 at p. 9 (emphasis added). In view of these reasons, and the absence of any evidence to the contrary, such as expert testimony regarding the combined teachings of Maimon ‘900 and Lin ‘184, we find Caltech’s positions as to the combined teachings of Maimon 15 ‘900 and Lin ‘184 are not supported by the record. Therefore, Caltech has not established by a preponderance of evidence that the subject matter of Claims 45- 47, 49 and 54-55 of Lockheed ‘499 application is unpatentable under 35 U.S.C. § 103(a) as being obvious over Maimon ‘900 and Lin ‘184. 20 Maimon ‘900 and White ‘063 With respect to White ‘063, Lockheed acknowledges that, contrary to Lin ‘184, White ‘063 teaches grading barrier interfaces in the same depletion-less, nBn-type device as disclosed by Maimon ‘900. Paper 44 at 11:11-17. Lockheed argues, however, that White ‘063 expressly teaches away from intentionally 25 grading barrier interfaces in a depletion-less device. Id. at 15. To support that “teaching away” argument, Lockheed relies on a portion of White ‘063 which describes: “[t]o avoid the need for compositional gradation at the emitter- barrier interface in order to remove large heterostructure 30 Interference No. 105,960 Caltech v. Lockheed Martin 48 discontinuities in bands, it is preferable that the emitter and barrier materials are n-type and p-type, respectively.” Paper 44, p. 12 (citing Ex. 2024 at col. 2, ll. 17-22). We do not find Lockheed’s argument persuasive on this point. First, “[a] 5 reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). However, a mere preference to dope materials with n-type or p-type to avoid the need for 10 compositional gradation at a particular barrier interface as suggested by White ‘063, without more, is neither a discouragement nor a diverging direction, and certainly, does not show that White ‘063 is “teaching away” from the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Second, as correctly noted by Caltech, White ‘063 teaches that grading can be used to match Fermi 15 levels: “The Fermi level is graded in the center layer 11 to accommodate the different levels in the two cladding layers 9 and 13.” Paper 51, p. 8 (citing Ex. 2024 at col. 8, ll. 41-43, Fig. 1). According to White ‘063, “discrepancies [alignment of Fermi levels] are reduced by inevitable compositional grading.” Id. (citing Ex. 2024 at col. 7, l. 24). 20 We have reviewed Caltech’s comparison of the teachings of Maimon ‘900 and White ‘063 with each limitation recited in Claims 45-47, 49, and 54-55 of Lockheed ‘499 application. We note, however, the only difference between the invention of independent claims 45 and 47 of Lockheed ‘499 application and Maimon ‘900 is the “barrier layer comprising a concentration gradient” and that 25 difference is taught by White ‘063 in the context of “compositional grading.” See Ex. 2024 at 7:1-24, 9:6-12, and Fig. 2. Based on the combined teachings of Interference No. 105,960 Caltech v. Lockheed Martin 49 Maimon ‘900 and White ‘063, our claim construction of the term “barrier layer comprising a concentration gradient” and the absence of any evidence to the contrary, we find that Caltech’s positions as to the combined teachings of Maimon ‘900 and White ‘063 are at least facially supported by the record. We also conclude a person skilled in the art would have recognized that compositional 5 grading at any barrier interface would at least create a “barrier layer comprising a concentration gradient” as recited in each of independent claims 45 and 47 of Lockheed ‘499 application. Accordingly, we are persuaded that Caltech has established that the subject matter of Claims 45-47, 49, and 54-55 of Lockheed ‘499 application is unpatentable under 35 U.S.C. § 103(a) as being obvious over 10 Maimon ‘900 and White ‘063. See Ex. 2010 at p. 263, ¶2; p. 275, ¶3. 4. Presumption Under 37 C.F.R. §41.207(c) A party moving for judgment based on prior art must also explain why the 15 prior art does not apply to the party’s claims. See Navarrini v. Worm, 79 USPQ2d 1178, 1183 (BPAI 2005). Specifically, 37 C.F.R. § 41.207(c) states: “When a motion for judgment of unpatentability against an opponent’s claim on the basis of prior art is granted, each of the movant’s claims corresponding to the same count as the opponent’s 20 claim will be presumed to be unpatentable in view of the same prior art unless the movant in its motion rebuts this presumption.” Caltech never seriously challenges the presumption created by 37 C.F.R. § 41.207(c). In its original motion, Caltech provides no explanation why Caltech’s 25 involved claims (Claims 1-6 of Caltech ‘411 patent) are not unpatentable over the same prior art against Claims 45-47, 49, and 54-55 of Lockheed ‘499 application. Paper 23 at 24. Instead, Caltech refers to arguments and evidence submitted Interference No. 105,960 Caltech v. Lockheed Martin 50 related motions to support an assertion that Caltech’s claims are directed to subject matter that is patentably distinct from Lockheed’s claims. Id. In its opposition (Paper 44), Lockheed responds that: (1) Caltech’s incorporation by reference is not permitted under S.O. ¶106.2 and (2) Caltech has failed to explain why the prior art identified in Caltech Motion 4 (Paper 23) is not 5 equally applicable to Caltech’s own Claims 1-6 of Caltech ‘411 patent (Paper 13; Ex. 1002) corresponding to the Count. Paper 44 at 4. In its reply (Paper 51), Caltech now argues all the prior art it cited is not applicable to Caltech’s own Claims 1-6 because the prior art teaches grading at an interface between absorption/barrier layers and between barrier/contact layers, 10 whereas Caltech Claims 1-6 are directed to a “barrier layer comprising a concentration gradient.” Paper 51 at 2. In particular, Caltech argues: (1) grading at an interface is different from a barrier layer comprising a concentration gradient; (2) Caltech ‘411 patent discloses both grading at an interface and a layer comprising a concentration gradient; (3) Lockheed ‘499 application only discloses 15 grading at heterojunctions to reduce spikes; (4) grading at the interface is used to reduce spikes at heterojunctions in both p-n junction devices and nBn devices; (5) known semiconductor techniques such as heterojunction grading to reduce spikes are applicable to nBn-type devices; (6) the teachings of prior art, such as White ‘063 (Ex. 2024) are applicable to Lockheed; (7) a device combining Lin’s teaching 20 of heterojunction grading with Maimon’s teaching of an nBn-type device would be operable; and (8) Lockheed’s failure to address a litany of prior art references cited by Caltech regarding compositional grading at the interface to reduce heterojunction discontinuities. Paper 51 at 2-10. We disagree with Caltech. First, Claims 1-6 of Caltech ‘411 patent are 25 essentially identical to Claims 45-47, 49, and 54-55 of Lockheed ‘499 Interference No. 105,960 Caltech v. Lockheed Martin 51 application.10 Second, and contrary to Caltech’s arguments, grading at an interface of a barrier layer would necessarily create a “barrier layer comprising a concentration gradient” because such a concentration gradient could be present at any particular location within the “barrier layer” including, for example: (1) across the barrier layer as proffered by Caltech, or alternatively, (2) at least one of (or 5 both) an interface between the barrier and absorption layers and an interface between the barrier and contact layers, as described by Lockheed’s specification (FF 3-12, 23-24). Thus, we find no patentable distinction between grading at an interface of a barrier layer and a barrier layer comprising a concentration gradient. Third, none of Caltech’s arguments adequately explains to us why Caltech’s 10 teachings of a “barrier layer comprising a concentration gradient” are patentably distinguishable over the same prior art cited against Lockheed. Lastly, and most tellingly, Caltech even acknowledges that “[w]hile the applicability of the prior art to the [Caltech] ‘411 patent may be an interesting aside, it is not relevant to this motion, nor does it change the fact that all of the prior art is applicable to the 15 [Lockheed] ‘499 application.” Paper 51 at 2. For the reasons set forth above, we find Caltech has failed to rebut the presumption under 37 C.F.R. § 41.207(c) regarding Claims 1-6 of Caltech ‘411 patent, and, as such, Claims 1-6 of Caltech ‘411 patent are presumed unpatentable over Maimon ‘900 and White ‘063. 20 5. 10 Lockheed Claim 45 differs from Caltech Claim 1 only in that the “detector” is further defined as having “no substantial depletion layer.” Paper 7 at 4-5. However, such a limitation is inherent in all nBn-type photo detector structure and, as such, does not require additional or separate patentability determination. Interference No. 105,960 Caltech v. Lockheed Martin 52 We next address the second group - Claims 26-29, 36, 37, 39, 43-44, and 53 of the Lockheed ‘499 application. Lockheed independent claim 26 recites a photodetector comprising: “a photo absorbing layer having a predetermined doping type, a contact layer having the predetermined doping type, and 5 a barrier layer disposed between said photo absorbing and contact layers, said barrier layer being configured to prevent majority carrier transport; where the barrier layer is graded with a first grading at a first interface area between said barrier layer and said contact layer and 10 graded with a second grading at a second interface area between said barrier layer and said photo absorbing layer such that the first grading creates a graded transition from the minority carrier band edge of the barrier layer to the minority carrier band edge of the contact layer; and 15 the second grading creates a graded transition from the minority carrier band edge of the photo absorbing layer to the minority carrier band edge of the barrier layer.” Paper 7; Ex. 2001, Claim 26 (emphasis added). 20 Similarly, Lockheed independent claim 36 also recites: “where the barrier layer is graded with a first grading at a first interface area between said barrier layer and said contact layer such that the first grading creates a graded transition from the minority carrier band edge of the barrier layer to the minority carrier band edge of the contact layer.” Paper 7 at 3-4; Ex. 2001, Claim 36. 25 Likewise, Lockheed independent claim 43 alternatively recites: “where the barrier layer is graded with a grading that creates a graded transition from the minority carrier band edge of the barrier layer to the minority carrier band edge of the contact layer and also creates a graded transition from the minority carrier band edge of the photo absorbing layer to the minority carrier band edge of the barrier 30 layer.” Paper 7 at 4; Ex. 2001, Claim 43. Interference No. 105,960 Caltech v. Lockheed Martin 53 In other words, in contrast to a simple “concentration gradient” included in the “barrier layer” as recited in Claims 45-47, 49, and 54-55 of Lockheed ‘499 application, each of Lockheed independent claims 26, 36 and 43 requires not only a “barrier layer … configured to prevent majority carrier transport” but also “graded with a first grading at first interface area … a second grading at a second 5 interface area … such that the first grading creates a graded transition from the minority carrier band edge of the barrier layer to the minority carrier band edge of the contact layer.” In other words, the gradient must extend across the interface areas of the barrier layer. As a result, these graded barrier interfaces can advantageously facilitate minority carrier transport while continuing to inhibit or 10 prevent majority carrier transport across the barrier. Ex. 2001 at Fig. 13 and ¶¶[0024], [0062]. Caltech’s Contentions As with Claims 26-29, 36, 37, 39, 43-44, and 53 of Lockheed ‘499 15 application, Caltech also contends that: (1) nBn detector structures and (2) compositional grading of barrier interfaces are well known, as evidenced from either the combination of Maimon ‘900 and Lin ‘184, or the combination of Maimon ‘900 and White ‘063. Paper 44 at 11:7-15. However, Caltech does not expressly identify the differences between Maimon and Lockheed Claims 26-29, 20 36, 37, 39, 43-44, and 53. Nevertheless, Caltech argues generally that grading the composition at barrier interfaces would result in a graded transition between the band edges of the adjacent layers and somehow would arrive at the subject matter of Claims 26-29, 36, 37, 39, 43-44, and 53 of Lockheed ‘499 application. Paper 23 at 23-24. 25 Interference No. 105,960 Caltech v. Lockheed Martin 54 We are not persuaded by Caltech’s arguments. First, we find that Lin ‘184 teaches grading barrier interfaces of a depletion region, p-n junction device and agree with Lockheed that, if applied to an opposing device, such as a depletion- less, nBn type device as disclosed by Maimon ‘900 and the Lockheed ‘499 application, the combination would not be operable as a depletion-less, nBn-type 5 photo detector. Paper 44 at 16 (citing Ex. 2004 at 7:24-29). Consequently, we find Caltech has not established by a preponderance of evidence that the subject matter of Claims 26-29, 36, 37, 39, 43-44, and 53 of Lockheed ‘499 application is unpatentable under 35 U.S.C. § 103(a) as rendered obvious over Maimon ‘900 and Lin ‘184. 10 Second, we find White ‘063 teaches compositional grading barrier interfaces of the same depletion-less, nBn type device as disclosed by Maimon ‘900 and Lockheed ‘499 application. As such, a person skilled in the art would have recognized such compositional grading at barrier interfaces as suggested by White ‘063 could be incorporated into a depletion-less, nBn type device as disclosed by 15 Maimon ‘900. The same person skilled in the art would also have recognized such compositional grading at barrier interfaces would eliminate bandgap discontinuities and reduce the spikes and notches and, as such, would be sufficient to create “a concentration gradient” as recited in the subject matter of Claims 45- 47, 49, and 54-55 of the Lockheed ‘499 application. However, such compositional 20 grading at barrier interfaces would also reduce barriers to both majority carrier flow and minority carrier flow. Ex. 2001 at Fig. 13 and ¶¶[0024], [0062]. This is contrary to the requirements of Claims 26-29, 36, 37, 39, 43-44, and 53 of Lockheed ‘499 application, i.e., to facilitate minority carrier transport while continuing to inhibit or prevent majority carrier transport across the barrier. Ex. 25 2001 at Fig. 13 and ¶¶[0024], [0062]. We find Caltech has not meaningfully Interference No. 105,960 Caltech v. Lockheed Martin 55 explained why one having ordinary skill in the art would have recognized that the minority carrier transport in the structure of Maimon ‘900 and White ‘063 could be promoted while continuing to inhibit or prevent the majority carrier transport across the barrier, and how the determination of obviousness could be based upon the teachings of Maimon ‘900 and White ‘063. 5 Caltech has not provided sufficient evidence or directed us to any scientific reasoning, apart from mere conclusory statements, to support an assertion that the combination of Maimon ‘900 and White ‘063 would facilitate minority carrier transport while continuing to inhibit or prevent majority carrier transport across the barrier of a depletion-less, nBn type device. Caltech’s arguments and conclusory 10 statements, which are unsupported by sufficient factual evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Certainly, Caltech’s arguments alone cannot take the place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 15 1974). Based on this record, we fail to findany reason or motivation to combine those teachings of White ‘063 and Maimon ‘900 to arrive at the subject matter of Claims 26-29, 36, 37, 39, 43-44, and 53 of Lockheed ‘499 application in order to facilitate minority carrier transport while continuing to inhibit or prevent majority 20 carrier transport across the barrier of a depletion-less, nBn type device. Ex. 2001 at Fig. 13 and ¶¶[0024], [0062]. Accordingly, we find that Caltech has not established by a preponderance of evidence that the subject matter of Claims 26- 29, 36, 37, 39, 43-44, and 53 of Lockheed ‘499 application is unpatentable under 35 U.S.C. § 103(a) as rendered obvious over Maimon ‘900 and White ‘063. 25 Interference No. 105,960 Caltech v. Lockheed Martin 56 VI. CONCLUSION Based on the record before us, we conclude that Caltech has not met its burden to show by the preponderance of evidence that: (1) the Lockheed ‘580 provisional application (Ex. 2002) lacks a constructive reduction to practice the subject matter of the Count, and (2) Lockheed Claims 45-47 are unpatentable 5 under 35 U.S.C. § 112, first paragraph, for lacking written description support for a “barrier layer comprising a concentration gradient.” As such, Caltech Motion 2 (Paper 21) is GRANTED relative to Lockheed’s first provisional application No. 60/865,793 (Ex. 2036) filed on November 14, 2006, but is otherwise DENIED relative to Lockheed’s second provisional application No. 60/880,580 (Ex. 2002) 10 filed on January 12, 2007. Likewise, Cal Motion 3 (Paper 31) is DENIED as to Lockheed Claims 45-47. Because Caltech Motion 5 (Paper 24) is contingent upon the granting of Caltech Motion 3 (Paper 22), and Caltech Motion 3 (Paper 22) is not GRANTED, the contingency has not materialized. Accordingly, Caltech Motion 5 (Paper 22) is DISMISSED as moot. 15 We also conclude that Caltech has met its burden to show by the preponderance of evidence that the subject matter of Claims 45-47, 49, and 54-55 of Lockheed ‘499 application is unpatentable under 35 U.S.C. § 103 over prior art, including Maimon ‘900 and White ‘063. However, Caltech has not shown that the subject matter of remaining Claims 26-29, 36, 37, 39, 43-44, and 53 of Lockheed 20 ‘499 application is unpatentable under 35 U.S.C. § 103(a) over the same prior art. We also conclude that Caltech has failed to rebut the presumption under 37 C.F.R. §41.207(c) regarding Claims 1-6 of Caltech ‘411 patent and, as such, Claims 1-6 of Caltech ‘411 patent are considered unpatentable over the same prior art by operation of the presumption of 37 C.F.R. § 41.207(c). 25 Interference No. 105,960 Caltech v. Lockheed Martin 57 As a result of the above decisions, Caltech no longer has any patentable claims in this interference and Lockheed remaining Claims 26-29, 36, 37, 39, 43- 44, and 53 of Lockheed ‘499 application have not been shown to be unpatentable. The remaining Claims 7-12 of the Caltech ‘411 patent and Lockheed’s remaining Claims 26-29, 36, 37, 39, 43-44, and 53 of Lockheed ‘499 application are 5 fundamentally different, and patentably distinct. The claims of Lockheed ‘499 application are directed to detector devices where grading is performed specifically at “interfaces” between layers in order to facilitate minority carrier transport (holes) while continuing to prevent majority carrier transport (electrons) across the barrier, whereas the remaining claims of Caltech ‘411 patent are directed to 10 detector devices where the absorption layer is comprised of a chirped strain layer supper lattice. Because of these significant differences, neither set of claims renders the other obvious. Thus, these claim sets do not meet the two-way test, and there is no interference-in-fact between remaining claims of Caltech ‘411 patent and Lockheed ‘499 application. See 37 C.F.R. §41.203(a). Because there 15 currently is no basis for formulating a count representing common patentable subject matter of the parties, it is appropriate to terminate the interference at this point. Consequently, we need not reach Lockheed Motion 1 (Paper 26) to designate Lockheed Claims 29, 44, and 53 of Lockheed ‘499 application as not corresponding to the Count. Therefore, Lockheed Motion 1 (Paper 26) is also 20 DISMISSED as moot. Interference No. 105,960 Caltech v. Lockheed Martin 58 VII. ORDER For the reasons discussed above, it is: ORDERED that Caltech Motion 2 (Paper 21) alleging lack of benefit is GRANTED relative to Lockheed’s first provisional application No. 60/865,793 filed on November 14, 2006, and is otherwise DENIED relative to Lockheed’s 5 second provisional application No. 60/880,580 filed on January 12, 2007; FURTHER ORDERED that Caltech Motion 3 (Paper 22) alleging lack of written description and enablement under 35 U.S.C. § 112, first paragraph is DENIED as to Claims 45-47 of Lockheed ‘499 application; FURTHER ORDERED that Caltech Motion 4 (Paper 23) alleging lack of 10 patentability under 35 U.S.C. § 103(a) is GRANTED as to Claims 45-47, 49, and 54-55, and is otherwise DENIED as to remaining Claims 26-29, 36, 37, 39, 43-44, and 53 of Lockheed ‘499 application; FURTHER ORDERED that, because Caltech did not overcome the presumption under 37 C.F.R. §41.207(c) that its own claims were unpatentable for 15 the same reasons set forth for Lockheed’s involved claims, and as such, we hold that Claims 1-6 of Caltech ‘411 patent are also unpatentable under 35 U.S.C. § 103(a) over the same prior art cited in Caltech Motion 4 (Paper 23); FURTHER ORDERED that: (1) Caltech contingent Motion 5 (Paper 24) for no interference-in-fact as to Lockheed remaining Claims 26, 29, 36, 37, 39, 43-44, 20 49, and 53-55 of Lockheed ‘499 application; and (2) Lockheed Motion 1 (Paper 26) to designate Lockheed Claims 29, 44, and 53 of Lockheed ‘499 application as not corresponding to the Count are DISMISSED as MOOT; FURTHER ORDERED that judgment be entered under 37 C.F.R. § 41.127 against the subject matter of Caltech Claims 1-6 of Caltech ‘411 patent and 25 Interference No. 105,960 Caltech v. Lockheed Martin 59 Lockheed Claims 45-47, 49, and 54-55 of Lockheed ‘499 application in a separate paper; and FURTHER ORDERED that a copy of this decision shall be entered into the files of Caltech’s involved patent, U.S. Patent No. 7,737,411 and Lockheed’s involved application, U.S. Patent Application No. 13/344,499. 5 /Richard E. Schafer/ ) RICHARD E. SCHAFER ) 10 Administrative Patent Judge ) ) /John G. New/ ) PATENT TRIAL AND JOHN G. NEW ) APPEAL BOARD Administrative Patent Judge ) 15 ) /Hung H. Bui/ ) HUNG H. BUI ) Administrative Patent Judge ) 20 Interference No. 105,960 Caltech v. Lockheed Martin 60 cc (via email delivery): Attorney for Junior Party – Caltech: Joel A. Kauth, Esq. John W. Peck, Esq. 5 KPPB LLP 2400 E. Katella Ave., Suite 1050 Anaheim, CA 92806 Email: Joel.Kauth@kppb.com Email: John.Peck@kppb.com 10 Attorney for Senior Party – Lockheed Martin: Michael K. Mutter, Esq. Naphtali Y. Matlis, Esq. Birch, Stewart, Kolasch & Birch, LLP 15 8110 Gatehouse Road, Suite 100 East Falls Church, VA 22042 Email: mailroom@bskb.com 20 Copy with citationCopy as parenthetical citation