Ex parte Cunningham et al.

Board of Patent Appeals and Interferences

Mar 5, 1998

08111765 (B.P.A.I. Mar. 5, 1998)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte JOHN E. CUNNINGHAM, and
WON-TIEN TSANG
_______________
Appeal No. 95-3055
Application 08/111,7651
_______________
ON BRIEF
_______________
Before KRASS, TORCZON, and CARMICHAEL, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 2 through 12, all of the claims pending in the
application.
The invention pertains to doping semiconductor materials in
such a manner to permit the tailoring of the activation energy of

1 Application for patent filed August 25, 1993. According to
appellants, this application is a continuation of Application
07/774,671, filed October 11, 1991.
Appeal No. 95-3055
Application No. 08/111,765
2
the dopant atoms making it possible to attain useful doping
levels in materials heretofore unable to attain such levels.
Independent claim 11 is reproduced as follows:
11. An article that comprises a multilayer semiconductor
structure comprising, in sequence, a first layer of thickness t1
of a first semiconductor material, a second layer of thickness t2
of a second semiconductor material, and a third layer of the
first semiconductor material, with the first and third layers
being essentially undoped, and the second layer comprising dopant
atoms that provide charge carriers to said first and third
layers, with the first semiconductor material differing in
chemical composition from the second semiconductor material;
associated with the first semiconductor material being a
first and a second band edge energy and an activation energy EA1
of said dopant atoms;
associated with said second semiconductor material being a
third and a fourth band edge energy, with said first, second,
third and fourth band edge energies being such that there exists
a band edge offset in at least one of the conduction or valence
band of the semiconductor body; and associated with each dopant
atom in the second layer being a wave function and a Bohr radius
rB;
CHARACTERIZED IN THAT
(a) t2 is at most 2rB, and the dopant atoms are located
such that the wave function of any given dopant atom extends
into at least one of said first and third layers, such that
said charge carriers experience Coulomb attraction to said
dopant atoms, and associated with said charge carriers is an
effective activation energy EAeff; and
(b) t1, t2, and the first and second semiconductor
materials are selected such that EAeff is less than EA1, and
t1 is much greater than t2 such that the multilayer
semiconductor structure behaves substantially as if the
dopant atoms were present in uniform first semiconductor
material.
The examiner relies on no references.
Appeal No. 95-3055
Application No. 08/111,765
3
Claims 2 through 12 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
applicants regard as their invention.
Reference is made to the brief and answer for the respective
positions of appellants and the examiner.
OPINION
We reverse.
The particular language in claim 11 which the examiner finds
indefinite is: “associated with each dopant atomYa wave
function…wave function of any given dopant atom extends into…”
and “t1 is much greater than t2 such that…behaves substantially
as if the dopant atoms were present in uniform first
semiconductor material.” The examiner’s apparent position is
that there is only one wave function for the totality of charge
carriers and it is indefinite and inaccurate to imply, as the
examiner apparently thinks the instant claim language does, that
there are separate wave functions for each carrier and that some
particular carrier is bound to some specific dopant atom.
In our view, the examiner’s rationale is short on specifics
as to what, exactly, is indefinite about particular claim
language. In any event, to whatever extent the language “wave
function of any given dopant atom” may appear, at first, to be a
bit awkward, appellants have explained its meaning by evidence
Appeal No. 95-3055
Application No. 08/111,765
4
via an affidavit of an expert in the field. More particularly,
of record is an affidavit by Dr. Serge Luryi, filed April 1,
1994. We find that Dr. Luryi is clearly an expert in the field
of semiconductor devices in view of his education, degrees,
authorship, research, patents and experience set forth on pages
1-2 of the affidavit. While Dr. Luryi’s unsubstantiated
statements, at page 2 of the affidavit, regarding enablement, are
not relevant to the issue of definiteness under 35 U.S.C. ' 112,
second paragraph, we find his statements, at pages 2-3 of the
affidavit, regarding the meaning of specific claim language, to
be particularly relevant and enlightening. More particularly,
Dr. Luryi states that it is “common and accepted practice among
semiconductor device physicists to refer to the ‘wave function of
a dopant atom’.” Further, Dr. Luryi states that those skilled in
this particular art “know that this language stands for ‘the wave
function of an electron or hole on the dopant atom,’ as the case
may be.” At the top of page 3 of the affidavit, Dr. Luryi
contends that:
It is an excellent approximation, and therefore
customary in semiconductor device physics, to treat
impurity (including dopant) atoms themselves as
classical objects. Thus the term “wave function of the
dopant atom” gives rise to no confusion among those
skilled in the art, since all skilled practitioners
understand this usage to refer to the wave function of
the electron or hole, as the case may be.
Appeal No. 95-3055
Application No. 08/111,765
5
Thus, while the claim language may not be as precise as the
examiner would like,2 we have evidence from an expert in the
field that skilled artisans would have understood that claim
language to mean what the examiner contends it does not mean.
Thus, we are faced with the situation wherein, on one hand,
the examiner contends that certain claim language is indefinite
because there can be no wave function of an electron or hole,
only a wave function of a collection of electrons or holes, and,
on the other hand, an expert in the field of semiconductor
devices states that the “wave function of the dopant atom” refers
to the “wave function of the electron or hole” and that these
terms are well known and understood by those skilled in the art
of semiconductor devices. The examiner offers no evidence to
buttress his position and/or to contradict the averments of the
expert. Therefore, we will not sustain the rejection of claims 2
through 12 under 35 U.S.C. ' 112, second paragraph, because, on
balance, we find for appellants and we base our decision on the
statements in the affidavit of Dr. Luryi regarding what skilled
artisans would have understood the term “wave function of the
dopant atom” to mean.

2 We note that although the examiner contends that the language
is indefinite, the examiner never offers an alternative or a
specific suggestion as to what language would please the
examiner.
Appeal No. 95-3055
Application No. 08/111,765
6
The examiner has accorded the Luryi affidavit little, if
any, weight, contending that the statements therein are “[p]urely
conclusory…without any factual basis therefor” [answer-page 5].
We find the examiner’s action in this regard to have been
improper. The affidavit establishes Dr. Luryi as an expert in
this field, and this is not gainsaid by the examiner. It is not
understood how a statement by an expert as to what skilled
artisans would have interpreted a term of art to mean is
“[p]urely conclusory.” The “factual basis” for the conclusion as
to what a particular term means is clearly the expert’s
experience and education in the field.
The examiner also states that “Luryi admitted that the
examiner’s rejection was correct” [answer-page 6]. However, we
have carefully reviewed the affidavit and find no such admission.
We find no adequate basis for sustaining the examiner’s
rejection of claims 2 through 12 under 35 U.S.C. ' 112, second
Appeal No. 95-3055
Application No. 08/111,765
7
paragraph, especially in view of the evidence provided by the
Luryi affidavit. Accordingly, the examiner’s decision is
reversed.
REVERSED
Errol A. Krass )
Administrative Patent Judge )
)
)
)
Richard Torczon ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
James T. Carmichael )
Administrative Patent Judge )
Appeal No. 95-3055
Application No. 08/111,765
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