Kadono, Takeshi et al.

Patent Trials and Appeals Board

Jan 6, 2020

14442367 - (D) (P.T.A.B. Jan. 6, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/442,367 05/12/2015 Takeshi Kadono SGIP153476 1551
26389 7590 01/06/2020
CHRISTENSEN O'CONNOR JOHNSON KINDNESS PLLC
1201 Third Avenue
Suite 3600
Seattle, WA 98101
EXAMINER
HSIEH, HSIN YI
ART UNIT PAPER NUMBER
2816
NOTIFICATION DATE DELIVERY MODE
01/06/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
efiling@cojk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKESHI KADONO and KAZUNARI KURITA
Appeal 2019-000764
Application 14/442,367
Technology Center 2800

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

REN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 7, 8, 10–13, and 16. Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “[A]pplicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as “SUMCO
Corporation.” Appeal Br. 1.
Appeal 2019-000764
Application 14/442,367

2
RELATED APPEALS
Appellant provides related appeals for U.S. Patent Application No.
14/442,373 and U.S. Patent Application No. 14/442,355. Appeal Br. 2.
We rendered a decision for U.S. Patent Application No. 14/442,373
affirming the Examiner’s decision on October 24, 2019.
We rendered a decision for U.S. Patent Application No. 14/442,355
affirming the Examiner’s decision on October 24, 2019.
CLAIMED SUBJECT MATTER
The claims are directed to “a method of producing a semiconductor
epitaxial wafer, which . . . can suppress metal contamination by achieving
higher gettering capability[.]” Spec. ¶ 1. Claim 7, reproduced below, is
illustrative of the claimed subject matter:
7. A semiconductor epitaxial wafer, comprising:
a semiconductor wafer; a modifying layer formed from a
certain element contained as a solid solution in the
semiconductor wafer, the modifying layer being formed in a
surface portion of the semiconductor wafer; and an epitaxial
layer on the modifying layer,
wherein a half width of a concentration profile of the
certain element in a depth direction of the modifying layer is
100 nm or less, and a haze level of a surface portion of the
epitaxial layer is 0.30 ppm or less.
Claims Appendix (Appeal Br. 16) (emphasis added).

Appeal 2019-000764
Application 14/442,367

3
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:

Name Reference Date
Glayish

US 2009/0206270 Al

Aug. 20, 2009
Ishibashi US 2012/0090536 A1 Apr. 19, 2012
Asayama

JP2010-040864
(as translated)

Feb. 18, 2010

REJECTIONS
Claims 7–8 and 10–13 are rejected under 35 U.S.C. § 112(b) or 35
U.S.C. § 112 (pre-AIA), second paragraph. Final Act. 3. We note that the
Examiner rejects claims 8 and 10–13 “because they depend on the rejected
claim 7.” Id. at 4. Although claim 16 is not explicitly rejected under 35
U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, because
claim 16 also depends from claim 7, we consider claim 16 similarly rejected
under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph.
See id.
Claims 7, 8, 10–12, and 16 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Asayama in view of Ishibashi. Final
Act. 5; Ans. 2.
Claim 13 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Asayama and Ishibashi, and further in view of Glayish.
Final Act. 7.

Appeal 2019-000764
Application 14/442,367

4
OPINION
Indefiniteness Rejection of Claim 72
We review the appealed indefiniteness rejection for error based upon
the issues identified by Appellant and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”). After having
considered the evidence presented in this Appeal and each of Appellant’s
contentions, we are not persuaded that reversible error has been identified,
and we affirm the Examiner’s indefiniteness rejection based on the
arguments raised and the evidentiary record.
The Examiner rejects claim 7 as indefinite finding that the claim term
“the half width of a concentration profile” is ambiguous rendering the scope
of claim 7 unclear when read in light of the Specification. Final Act. 2–3, 4.
Appellant argues that the Examiner reversibly erred by giving “no
weight” to the evidence in the record. Appeal Br. 5, 6. According to the
Appellant, the evidence shows that a skilled artisan would have understood
the term “half width of a concentration profile” to only mean “‘Full Width at
Half Maximum’ or FWHM” — and not half width at half maximum
(HWHM) of the concentration profile.3 Id. at 5. Specifically, Appellant

2 Appellant does not present separate arguments for the indefiniteness
rejection of claims 8, 10–13, and 16. See Appeal Br. 4–9. The indefiniteness
rejection of claims 8, 10–13, and 16 therefore stands or falls with that of
claim 7. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).
3 According to Appellant’s document titled “What is a Continuous Particle
Size Distribution” (“document two” discussed in further detail infra),
Appeal 2019-000764
Application 14/442,367

5
argues that the Examiner gives no weight to a declaration (by Mr. Takeshi
Kadono (“Declaration” or “Decl.”) who is one of the named inventors of the
pending application) and three documents accompanying the Declaration.
The Examiner, on the other hand, reasons that, when read in light of
the Specification, a skilled artisan would have reasonably understood the
claim term to have multiple possible meanings. Ans. 2–3; see also Final Act.
4. Upon considering the evidence presented by Appellant (discussed in detail
infra), the Examiner provides that a skilled artisan would have understood
the recited “half width” to mean either FWHM or HWHM — or that the
skilled artisan would not have excluded HWHM from the definition of “half
width.” Ans. 2–3. The Examiner further states that a skilled artisan could
also have reasonably understood “the half width of a concentration profile”
to also mean half of the width of a concentration profile — such as half of
the overall width of a Gaussian curve for a concentration distribution. Final
Act. 4.
From the outset, we note that the Specification does not provide a
definition of the term “half width of the concentration profile.” Ans. 2. The
Specification also does not use the term “full width at half maximum” or
“half width at half maximum.” Id. at 4. All that is provided in the
Specification is that “‘the half width of the concentration profile of a certain
element’ is a half width of the concentration profile of the certain element
measured by SIMS, with the epitaxial layer being thinned to 1 µm

FWHM or “the full width at half maximum . . . is obtained by drawing a
horizontal line at 50% of the maximum and taking the difference between
the two places it intersects the distribution[, e.g., the concentration profile as
represented as a distribution].” Document two, p.1. HWHM, or “the half
width at half maximum,” is half of the value of FWHM. Id.
Appeal 2019-000764
Application 14/442,367

6
considering the measurement accuracy if the thickness of the epitaxial layer
exceeds 1 µm.” Spec. ¶ 56.
In the Declaration, Mr. Kadono explains that the Specification as well
as each of the three accompanying documents shows that “half width”
means “full width at half maximum.” Decl. ¶¶ 5, 6.
With regard to the Specification, Mr. Kadono presents FIG. 5A4 and
states that the figure shows “the half width of the Carbon concentration is
defined as a width at about 1.5 x 1019 atoms/cm3” and the half width is found
to be 91 nm which satisfies the claim limitation of “100 nm or less.” Decl. ¶
6.5
We are not persuaded by Appellant that the Examiner gives no weight
to Mr. Kadono’s statement based on the Specification. Appeal Br. 6–7. As
the Examiner points out, when read in light of the Specification (including
FIG. 5A as well as other figures and the disclosure in its entirety), a skilled
artisan would not have limited the scope of “the half width of a
concentration profile” to full width at half maximum (FWHM) or excluded
other alternative meanings such as half width at half maximum (HWHM) or
half of the overall width of the concentration profile. Final Act. 2–3. We also
note that one of the accompanying documents (document two discussed
supra) discussed in the Declaration indicates that the half width at half

4 Also included on page 5 of in the Declaration is a separate figure titled
“FIG 5.A” which is a figure similar to FIG. 5A but without the texts
“Example 1 Cluster ion (C5H5)” and “Modifying Layer.” “FIG 5.A”
additionally includes a call-out box for the peak showing a width of 91 nm.
The Declaration does not explain the source of “FIG 5.A” which does not
appear in the Specification.
5 Mr. Kadono does not rely on “FIG 5.A” and does not provide how the
value of 91 nm is reached. See Decl. ¶ 6.
Appeal 2019-000764
Application 14/442,367

7
maximum is half of the value of full width at half maximum, and, to the
extent the skilled artisan would find, as Mr. Kadono did, a full width at half
maximum of 91nm, FIG. 5A would likewise support the claim limitation of
“100 nm or less” at half width at half maximum, because half of 91 nm (or
45.5 nm) is also “100 nm or less.”
Moreover, the data in Table 1 includes the “half width” of various
examples but does not unequivocally define the term to mean FWHM over
any other meaning, namely HWHM or half of the overall width of the
concentration profile. See Spec. 24, Table 1. Appellant’s statement that FIG.
5A shows the concentration profile of example 1 does not support
Appellant’s position because FIG. 5A does now illustrate how the 91 nm
value of Table 1 was calculated from FIG. 5A or inform us of the meaning
of the “half width” value in the Table. Appellant has not shown that a skilled
artisan would have understood FIG. 5A to mean that the recited “half width”
necessarily means FWHM over any other meaning. Appellant’s attorney
argument, not based on the evidentiary record, does not persuade us of
reversible error.
With regard to document one, which is an excerpt from the
International Union of Pure and Applied Chemistry (or IUPAC)
Compendium of Chemical Terminology, 2nd Edition (1997), Mr. Kadono
states that it “contains a definition of ‘half-width (of a band)’ as the ‘full
width of a spectral band at a height equal to half of the height at the band
maximum. Also known as full width at half maximum (FWHM).” Decl. ¶ 5.
An image of the entirety of document one is reproduced below as Figure 1:
Appeal 2019-000764
Application 14/442,367

8

Figure 1. An image of the excerpt from the IUPAC Compendium of
Chemical Terminology. Decl. ¶ 5.

The Examiner points out that document one does not support
Appellant’s argument because the definition is for the “half-width (of a
band)” — distinct from the phrase at issue which is “half width of the
concentration profile.” Final Act. 2 (emphasis omitted). Although Mr.
Kadono states that “[t]he ‘full width at half maximum’ value is a common
term used to describe a distribution, such as in mass spectrometry, for
example” (Decl. ¶ 5), Mr. Kadono does not explain how the recited
limitation “half width of the concentration profile” relates to the “half-width
(of a band)” in document one. Mr. Kadono also does not explain why the
phrase “half width of the concentration profile” would have necessarily been
understood by the skilled artisan to mean only “full width at half maximum.”
In other words, Mr. Kadono’s statement that “[t]he ‘full width at half
maximum’ value is a common term used to describe a distribution, such as
in mass spectrometry” does not explain what the phrase “half width of a
concentration profile” means to a skilled artisan when read in light of the
Specification. Mr. Kadono’s opinion with regard to document one does not
support Appellant’s argument that the recited “half width of a concentration
Appeal 2019-000764
Application 14/442,367

9
profile” means full width at half maximum and excludes all other meanings
such as the half width at half maximum or half of the overall width. See
Decl. ¶ 5 (stating only that “one of ordinary skill in the art would understand
that ‘half width of the concentration profile’ refers to the ‘full width at half
maximum’ of the concentration profile” without explaining how this opinion
is evidenced by a different term, “half-width (of a band),” in document one).
Moreover, we note that document one in fact further provides “[h]alf
bandwidth has the meaning of half-width at half maximum” (document one)
contrasted with the “full width of a spectral band at a height equal to half of
the height at the band maximum” which is “[a]lso known as full width at
half maximum (FWHM).” Decl. ¶ 5 (citing document one). Rather than
clarifying the meaning of “half width of the concentration profile,”
document one provides further ambiguity by raising the similar sounding
term “half bandwidth” with yet another possible meaning. We are therefore
not persuaded that the Examiner reversibly erred in weighing the evidentiary
value of document one or Mr. Kadono’s statement with regard to document
one and finding that document one does not provide a clear an unequivocal
definition of the recited limitation “half width of the concentration profile.”
Mr. Kadono states that document two, which is a “Brookhaven
Instruments Corporation White Paper, . . . graphically shows the location of
FWHM of a distribution.” Decl. ¶ 5. As the Examiner points out, although
Mr. Kadono’s statement with regard to document two is correct, it does not
support the argument that the skilled artisan would have understood the
recited limitation of “half width of a concentration profile” to mean “full
width at half maximum of the concentration profile.” Final Act. 2. The
Examiner further points out that document two does not use the term “half
Appeal 2019-000764
Application 14/442,367

10
width” at all and in fact provides “HWHM, the half width at half maximum,
is another measure of width.” Document two, p. 1; see also Final Act. 2;
Ans. 3. We are therefore not persuaded that the Examiner reversibly erred in
properly weighing the evidentiary value of document two or Mr. Kadono’s
statement with regard to document two.
Mr. Kadono states that document three, which is a translation from a
Japanese dictionary, provides that “‘half width’ means FWHM (Full width at
half-maximum) in general.” Decl. ¶ 5. The Examiner points out, however,
that the text of document three (provided in the Declaration) allegedly uses
the terms “full width at half maxim” and “half width” in Japanese which is
then translated into English. Final Act. 2. The Examiner notes that the record
before us, to the extent it is an accurate translation, does not show that “half
width” in Japanese is necessarily the same as “half width” in the English
language in which claim 7 is written. Ans. 3.
Even if we were to take, as an established fact, that “‘half width’
means FWHM (Full width at half-maximum) in general,” at least in the
Japanese language (Decl. ¶ 5), we are nonetheless unpersuaded that this
supports Appellant’s argument that the recited “half width of the
concentration profile” excludes other meanings such as the one given by the
Examiner in light of the Specification (Final Act. 4) or a half width at half
maximum of the concentration profile.
Appellant also presents a prior art reference, namely Patent No.
5,929,462 (“the ’462 Patent”), which uses “FWHM” to refer to “the half-
width of the photoluminescence spectrum.” Appeal Br. 8–9 (citing ’462
Patent at 4:33). We note, however, that the ’462 Patent also uses the acronym
“FWHM” to refer to “the half-width at half maximum.” ’462 Patent at 5:26–
Appeal 2019-000764
Application 14/442,367

11
29 (“Both the half-width at half maximum of the photoluminescence
spectrum (FWHM) and the current density threshold were measured to
evaluate the laser characteristics of the Semiconductor optical device 10.”).
Appellant does not explain why this statement in the ’462 Patent supports
the argument that the recited “half width” is “known in the art as ‘Full Width
at Half Maximum’ or FWHM[.]” Appeal Br. 8–9. The ’462 Patent is
therefore not entirely consistent with the dictionary meaning provided by
Appellant — further underscoring the Examiner’s finding that there are
multiple reasonable meanings of the disputed term.
As the court states in In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997):
The appellants urge us to consult the specification and some of the
cited prior art . . . and interpret the disputed language more narrowly in view
thereof. When read in light of this material, according to applicants, the
‘true’ meaning of the phrase emerges. We decline to attempt to harmonize
the applicants’ interpretation with the application and prior art. Such an
approach puts the burden in the wrong place. It is the applicants’ burden to
precisely define the invention, not the PTO’s. See 35 U.S.C. § 112, ¶ 2. . . .
[T]his section puts the burden of precise claim drafting squarely on the
applicant.
In this case, neither the Specification nor the evidence in the record
before us supports Appellant’s argument to restrict the disputed term to only
one reasonable definition. In analyzing this case, we are mindful of the
“essential purpose of patent examination [which] is to fashion claims that are
precise, clear, correct, and unambiguous. Only in this way can uncertainties
of claim scope be removed, as much as possible, during the administrative
Appeal 2019-000764
Application 14/442,367

12
process.” In re Zletz, 893 F.2d 319, 321–22 (Fed. Cir. 1989) (“During patent
examination the pending claims must be interpreted as broadly as their terms
reasonably allow. . . . The reason is simply that during patent prosecution
when claims can be amended, ambiguities should be recognized, scope and
breadth of language explored, and clarification imposed.”). “[I]f a claim is
amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim unpatentable under 35
U.S.C. § 112, second paragraph, as indefinite.” Ex parte Miyazaki, 89
USPQ2d 1207, 1211 (BPAI 2008) (precedential).
Based on the record before us including the Declaration and the
accompanying documents — none of which shows that other possible
definitions should be excluded or are unreasonable, we are not persuaded by
Appellant that the Examiner reversibly erred by giving “no weight” (Appeal
Br. 5, 6) to the Declaration and the accompanying documents. “[I]f a claim
is amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim unpatentable under 35
U.S.C. § 112, second paragraph, as indefinite.” Ex parte Miyazaki, 89
USPQ2d 1207, 1211 (BPAI 2008) (precedential). We accordingly sustain
the Examiner’s indefiniteness rejection.
Obviousness Rejections
Review of the rejections under 35 U.S.C. § 103(a) would require
considerable speculation as to the scope of the claims. Such speculation
would not be appropriate. In re Steele, 305 F.2d 859, 862 (CCPA 1962)
(“[W]e do not think a rejection under 35 U.S.C. § 103 should be based on
Appeal 2019-000764
Application 14/442,367

13
such speculations and assumptions.”). We, therefore, decline to reach the 35
U.S.C. § 103(a) rejections as a result of our affirmance of the indefiniteness
rejection, and the ambiguous meaning of the phrase “half width of the
concentration profile.”
CONCLUSION
The Examiner’s indefiniteness rejection is affirmed.
In summary,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7, 8, 10–
13, 16
112(b) or 112
(pre-AIA),
second
paragraph
Indefiniteness 7, 8, 10–13, 16
7, 8, 10–
12, 16
103(a) Asayama and Ishibashi Not reached6 Not
reached
13 103(a) Asayama, Ishibashi,
and Glayish
Not reached7 Not
reached
Overall
Outcome
7, 8, 10–13, 16

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

6, 7 As explained above, we do not reach this rejection. Steele, 305 F.2d at
862 (“[W]e do not think a rejection under 35 U.S.C. § 103 should be based
on such speculations and assumptions.”).
Appeal 2019-000764
Application 14/442,367

14
AFFIRMED