Ex Parte Asano et al

Board of Patent Appeals and Interferences

Mar 20, 2012

10505438 (B.P.A.I. Mar. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TETSURO ASANO, MIKITO SAKAKIBARA, and
TOSHIKAZU HIRAI
___________

Appeal 2009-014070
Application 10/505,438
Technology Center 2800
____________

Before KRISTEN L. DROESCH, JEFFREY S. SMITH, and
ERIC B. CHEN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014070
Application 10/505,438

2
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 20-42. Claims 1-19 have been cancelled. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to a microwave field effect transistor
(FET) having a first high concentration impurity region, a second high
concentration impurity region, and an insulating region disposed in contact
with and between the first and second high concentration impurity regions.
The first and second high concentration impurity regions are arranged as two
terminals connected in parallel between two terminals of a protected element
having a PN junction or Schottky junction. Electrostatic energy applied
between the two terminals of the protected element is discharged between
the first and second high concentration impurity regions. (Abstract;
Spec. 2:3-11.)
Claims 20 and 39 are exemplary, with disputed limitations in italics:
20. A protecting element comprising:
a first high concentration impurity region formed in an
insulating region of a substrate and connected to a first terminal of an
element formed in the substrate; and
a second high concentration impurity region formed in the
insulating region and connected to a second terminal of the element,
the first and second high concentration impurity regions facing each
other with a portion of the insulating region disposed therebetween,
wherein a width of the first high concentration impurity region
is configured so that upon discharging of electrostatic energy applied
between the first and second terminals a current path is formed in the
insulating region from an outer side surface of the first high
concentration impurity region to the second high concentration
impurity region, the outer side surface of the first high concentration
Appeal 2009-014070
Application 10/505,438

3
impurity region being opposite from an inner side surface of the first
high concentration impurity region that faces the portion of the
insulating region, and
the inner side surface of the first high concentration region
overlaps at least partially with an inner side surface of the second
high concentration region so that the portion of the insulating region
is disposed between the inner side surfaces.

39. A protecting element comprising:
a first high concentration impurity region formed in an
insulating region; and
a second high concentration impurity region formed in the
insulating region,
wherein the first high concentration impurity region is
connected to a first terminal of an element comprising a PN junction
or a Schottky junction, the second high concentration impurity region
is connected to a second terminal of the element,
the first and second high concentration impurity regions in the
insulating region are positioned so that an electrostatic energy applied
between the first and second terminals is at least partially discharged
by a flow of electric current in the insulating region between the first
and second high concentration impurity regions, and
a distance in the direction of the flow of electric current
between the first high concentration impurity region and an edge of
the insulating region closest to the first high concentration impurity
region is 10 µm or larger.

Claims 20-38 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 32, 37 and 39-42 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 20-38 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention.
Appeal 2009-014070
Application 10/505,438

4
Claims 32, 37 and 39-42 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
Claims 20, 22, 24-31, 34, 36 and 38 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Asano (U.S. Patent Application Publication
No. 2002/0047177).1
Claims 21, 23, 33 and 35 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Asano.

ANALYSIS
§ 112, First Paragraph, Rejections
With respect to independent claim 20, we are not persuaded by
Appellants’ arguments (App. Br. 4-5; see also Reply Br. 2) that the claim
limitation “the inner side surface of the first high concentration region
overlaps at least partially with an inner side surface of the second high
concentration region so that the portion of the insulating region is disposed
between the inner side surfaces” complies with the written description
requirement under 35 U.S.C. § 112, first paragraph.
The Examiner found that “[t]here does not appear to be a written
description of the claim limitation ‘the inner side surface of the first high
concentration region overlaps at least partially with an inner side surface
of the second high concentration region . . . .’” (Ans. 3.) In particular, the
Examiner found that “Fig. 5 as well as the written text shows that the first

1 Both Appellants and the Examiner have inadvertently omitted claim 22
from the statement of the rejection. (App. Br. 2, 8; Ans. 7.)
App
App

and
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second hig
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Figure 5
onal view
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EGIATE D
irst high c
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or past an
Appellan
, 16B, 19C
e first and
.) Similar
irst high c
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on betwee
surfaces a
14070
/505,438
h concentr
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B of Appe
of a FET,
a second
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occupy the
ICTIONARY
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ts argue th
, 21B, 22A
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ly, Appell
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ation 201
agree with
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including
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of “overla
same are
829 (10th
n region 2
te and dist
art of” or
at “FIGS
, 23A, 24
gh concent
ants argue
n region 2
the second
regions 20
(App. B
5
and 202 d
the Exam
cification
a first high
ntration im
p” is “to e
a in part.”
ed. 1999
01 and th
inct region
“occupy t
. 1, 2A-4A
and 25 al
ration reg
that in Fig
01 overla
high conc
1 and 202
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iner.
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xtend ove
MERRIAM
). Because
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, 5A-7A, 8
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is dispose
pellants f
lap, not ev
ed below,
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gion 202:

r or past a
-WEBSTER
Figure 5
concentra
ions cann
ea in part.
A, 9A, 9B
claimed o
nd 202.”
e inner sur
partially w
egion 202
d between
urther argu
en
is a cross-
rity
nd cover a
’S
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tion
ot “extend
”
, 10A, 12
verlapping
(App.
face OS o
ith the
so that th
the inner
e that

,

f
e
Appeal 2009-014070
Application 10/505,438

6
“[t]he specification provides ample examples of the claimed overlapping,
and the plain meaning of the word ‘overlap’ is ‘to extend over or pass and
cover a part of.’” (Reply Br. 2.) Contrary to Appellants’ arguments, all of
the figures from Appellants’ Specification illustrate that the first high
concentration region 201 and the first high concentration region 202 are two
separate and distinct regions and therefore, cannot “overlap.”
Thus, we agree with the Examiner that the Specification does not
provide written description support for “the inner side surface of the first
high concentration region overlaps at least partially with an inner side
surface of the second high concentration region so that the portion of the
insulating region is disposed between the inner side surfaces.”
Accordingly, we sustain the rejection of independent claim 20 under
35 U.S.C. § 112, first paragraph. Claims 21-38 depend from claim 20, and
Appellants have not presented any substantive arguments with respect to
these claims. Therefore, we sustain the rejection of claims 21-38 under 35
U.S.C. § 112, first paragraph, for the same reasons discussed with respect to
independent claim 20.
With respect to independent claim 39, we are not persuaded by
Appellants’ arguments (App. Br. 5-6; see also Reply Br. 2-3) that the claim
limitation “a distance in the direction of the flow of electric current between
the first high concentration impurity region and an edge of the insulating
region closest to the first high concentration impurity region is 10 µm or
larger” complies with the written description requirement under 35 U.S.C.
§ 112, first paragraph.
The Examiner found that “there does not appear to be a written
description of the claim limitation ‘ . . . an edge of the insulating region
App
App

close
. . . .
the f
regio
betw
(Ans
view
conc
insul
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The
more
side
furth
(Spe
to th
betw
insul
eal 2009-0
lication 10
st to the f
” (Ans. 4.
irst high c
n closest t
een the tw
. 5.) We a
Figure 2
of the firs
entration i
ating regio
ce OS” (S
n 201:
Specificat
and prefe
of the first
er to incre
c. 29:20-2
e first high
een “the f
ating regio
14070
/505,438
irst high co
) In partic
oncentratio
o the first
o, which i
gree with
1B of App
t high con
mpurity re
n width β
pec. 28:29
ion further
rably 15 µ
n+-type re
ase the co
2.) Claim
concentra
irst high co
n [203],”
ncentratio
ular, the E
n impurit
high conc
s 0 µm, sin
the Exami
ellants’ Sp
centration
gion 202 t
. . . secure
-30) of the
explains t
m or more
gion 201,
nductivity
39 recites
tion impu
ncentratio
rather than
7
n impurity
xaminer f
y region an
entration i
ce the int
ner.
ecificatio
impurity r
hat illustra
d at the si
first high
hat “by se
for the in
the second
modulatio
“an edge o
rity region
n impurity
the width
region is
ound that “
d an edge
mpurity re
erface has
n, reprodu
egion 201
tes “a pre
de opposit
concentra
curing a w
sulating re
current p
n efficienc
f the insu
” that defi
region [2
β of 10 µ
10 µm or
[t]he term
of the ins
gion’ is th
no thickne
ced below
and the se
determine
e from the
tion impu

idth β of 1
gion 203
ath I2 can
y further.
lating regi
nes an inte
01]” and “
m or more
larger’
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ulating
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ss.”
, is a plan
cond high
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at the oute
be spread
”
on closest
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. Thus,

r

Appeal 2009-014070
Application 10/505,438

8
the claimed “distance . . . between the first high concentration impurity
region and an edge of the insulating region closest to the first high
concentration impurity region” would be approximately zero (i.e., the
thickness of an interface), rather than “10 µm or larger.”
Appellants argue the Examiner’s construction is unreasonable
because:
persons skilled in the art would understand that the portion of
the insulating region that is in contact with the first high
concentration impurity region cannot be the claimed edge of the
insulating region, because such an interpretation would make
meaningless the express claim limitation that the distance from
the edge is 10 µm or longer.
(App. Br. 6.) However, as discussed previously, the recitation in claim 39 of
“an edge of the insulating region closest to the first high concentration
impurity region” defines an interface between “the first high concentration
impurity region” and “the insulating region.” Furthermore, Appellants have
not offered any persuasive evidence that “persons skilled in the art would
understand that the portion of the insulating region that is in contact with the
first high concentration impurity region cannot be the claimed edge of the
insulating region.” Arguments of counsel cannot take the place of factually
supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40
(Fed. Cir. 1996).
Thus, we agree with the Examiner that the Specification does not
provide written description support for “a distance in the direction of the
flow of electric current between the first high concentration impurity region
and an edge of the insulating region closest to the first high concentration
impurity region is 10 µm or larger.”
Appeal 2009-014070
Application 10/505,438

9
Accordingly, we sustain the rejection of independent claim 39 under
35 U.S.C. § 112, first paragraph.
Dependent claims 32 and 37 and independent claims 40-42 recite
limitations similar to those discussed with respect to independent claim 39,
and Appellants have not presented any substantive arguments with respect to
these claims. We sustain the rejection of claims 32, 37 and 40-42 for the
same reasons discussed with respect to claim 39.
§ 112, Second Paragraph, Rejections
With respect to independent claim 20, we are not persuaded by
Appellants’ arguments (App. Br. 7-8) that the claim limitation “the inner
side surface of the first high concentration region overlaps at least partially
with an inner side surface of the second high concentration region so that the
portion of the insulating region is disposed between the inner side surfaces”
complies with 35 U.S.C. § 112, second paragraph, by particularly pointing
out and distinctly claiming the subject matter which applicant regards as the
invention.
The Examiner found that claim 20 is indefinite because “[i]f two
regions are deem[ed to] overlap then nothing is between them.” (Ans. 6.) In
particular, the Examiner found that “the presence of the insulating
region 203 between inner side surface of the two impurity region[s] 201 and
202, thus, the two regions 201 and 202 can not and should not be
overlapped.” (Ans. 16.) We agree with the Examiner.
The claim language “the inner side surface of the first high
concentration region overlaps . . . with an inner side surface of the second
high concentration region” conflicts with the claim language “the portion of
the insulating region is disposed between the inner side surfaces” (emphases
Appeal 2009-014070
Application 10/505,438

10
added). As discussed previously, a relevant plain meaning of “overlap” is
“to extend over or past and cover a part of” or “to occupy the same area in
part.” In other words, if “the inner side surface of the first high
concentration region” extends over or past and covers a part of “the second
high concentration region” or occupies the same space as “the second high
concentration region,” then “the portion of the insulating region” cannot be
disposed between the inner side surfaces.
Appellants argue that “the claimed overlapping of the first and second
high concentration regions must leave space between the inner side surfaces
of the two regions so that part of the insulating region is disposed between
them.” (App. Br. 7-8.) However, as discussed previously, the claim
language that the first high concentration region “overlaps” with the second
high concentration region conflicts with the claim language “the portion of
the insulating region is disposed between the inner side surfaces.”
Appellants also argue that “[i]f the first and second high concentration
regions were to be in contact as the Examiner alleges, the FET [disclosed at
page 5, lines 3-12, of the Specification] would fail to operate because of the
improper signal pass permanently created by the alleged contact.” (App.
Br. 8.) However, the importation of a narrow embodiment into the broader
independent claim 20 is improper. See SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“For example, a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”).
Thus, we agree with the Examiner that the claim limitation “the inner
side surface of the first high concentration region overlaps at least partially
with an inner side surface of the second high concentration region so that the
Appeal 2009-014070
Application 10/505,438

11
portion of the insulating region is disposed between the inner side surfaces”
is indefinite.
Accordingly, we sustain the rejection of independent claim 20 under
35 U.S.C. § 112, second paragraph. Claims 21-38 depend from claim 20,
and Appellants have not presented any substantive arguments with respect to
these claims. Therefore, we sustain the rejection of claims 21-38 under 35
U.S.C. § 112, second paragraph, for the same reasons discussed with respect
to independent claim 20.
With respect to independent claim 39, we are not persuaded by
Appellants’ arguments (App. Br. 7) that the claim limitation “a distance in
the direction of the flow of electric current between the first high
concentration impurity region and an edge of the insulating region closest to
the first high concentration impurity region is 10 µm or larger” complies
with 35 U.S.C. § 112, second paragraph, by particularly pointing out and
distinctly claiming the subject matter which applicant regards as the
invention.
The Examiner found that “the claimed limitation is not understood”
(Ans. 6) because “claiming an ‘interface’ region between the first high
concentration impurity region and the closet insulating region to have a
thickness of ‘10 µm or larger’ is indefinite, since it is well known that the
‘interface’ between two layers has no thickness” (Ans. 16). We agree with
the Examiner.
As discussed previously, claim 39 recites “an edge of the insulating
region closest to the first high concentration impurity region” which defines
an interface between “the first high concentration impurity region” and “the
insulating region” (emphasis added). Thus, the claimed language a
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Application 10/505,438

12
“distance . . . between the first high concentration impurity region and an
edge of the insulating region closest to the first high concentration impurity
region” conflicts with the claim language “10 µm or larger,” because such a
“distance” would be approximately zero (i.e., the thickness of an interface).
Appellants argue that:
persons skilled in the art would understand that the claimed
edge of the insulating region corresponds to the part of the
contour of the insulating region that is closest to the first high
concentration impurity region, in other words, the part of the
contour located at the minimum distance from the first high
concentration impurity region . . . .
(App. Br. 7.) However, as discussed previously, the claim language a
“distance . . . between the first high concentration impurity region and an
edge of the insulating region closest to the first high concentration impurity
region” conflicts with the claim language “10 µm or larger.” Furthermore,
Appellants have not offered any persuasive evidence that “persons skilled in
the art would understand that the claimed edge of the insulating region . . .
the part of the contour located at the minimum distance from the first high
concentration impurity region.” Again, arguments of counsel cannot take
the place of factually supported objective evidence. See, e.g., Huang, 100
F.3d at 139-40.
Thus, we agree with the Examiner that the claim limitation “a distance
in the direction of the flow of electric current between the first high
concentration impurity region and an edge of the insulating region closest to
the first high concentration impurity region is 10 µm or larger” is indefinite.
Accordingly, we sustain the rejection of independent claim 39 under
35 U.S.C. § 112, second paragraph.
Appeal 2009-014070
Application 10/505,438

13
Dependent claims 32 and 37 and independent claims 40-42 recite
limitations similar to those discussed with respect to independent claim 39,
and Appellants have not presented any substantive arguments with respect to
these claims. We sustain the rejection of claims 32, 37 and 40-42 for the
same reasons discussed with respect to claim 39.
Prior Art Rejections
We do not reach the rejections of claims 20-31, 33-36 and 38 over the
prior art because we have concluded that the claims are indefinite under 35
U.S.C. § 112, second paragraph. Rejections of claims over prior art should
not be based on speculation and assumptions as to the scope of the claims.
See In re Steele, 305 F.2d 859, 862 (CCPA 1962).

DECISION
The Examiner’s decision to reject claims 20-42 is affirmed.
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).

AFFIRMED

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