Ex Parte Kimura

Patent Trial and Appeal Board

Sep 29, 2017

12754936 (P.T.A.B. Sep. 29, 2017)

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.
12/754,936 04/06/2010 Hajime KIMURA 0756-8822 7640
31780 7590 10/03/2017
Robinson Intellectual Property Law Office, P.C.
3975 Fair Ridge Drive
Suite 20 North
Fairfax, VA 22033
EXAMINER
KIM, JAY C
ART UNIT PAPER NUMBER
2815
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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):
ptomail @ riplo .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAJIME KIMURA
Appeal 2015-006448
Application 12/754,936
Technology Center 2800
Before CARLA M. KRIVAK, CAROLYN D. THOMAS, and
JOHN R. KELLY, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant requests rehearing of the Decision on Appeal of May 2,
2017 (“Dec.”). Appellant contends the Board erred in the Decision by
affirming the Examiner’s rejection of claims 1-11 and 16-26 under 35
U.S.C. § 112, first paragraph (Reh’g. Req. U).
1 See Applicant’s Request for Rehearing under 37 C.F.R. § 41.52, filed June
29, 2017 (“Reh’g. Req.).
Appeal 2015-006448
Application 12/754,936
The Decision has been reconsidered in light of Appellant’s arguments
in the Request for Rehearing and no errors have been found. Therefore, the
Decision is not modified for the reasons discussed below.
ANALYSIS
Appellant contends the Board’s Decision is premised on: 1) “a
perceived reliance on the policy” and not law; 2) “an unreasonably narrow
focus on only isolated” portions of the Specification; and 3) “an
unreasonable ‘property’ versus ‘material’ distinction” that is “not entirely
germane to the issue” and “appears premised on logical fallacy” (Reh’g.
Req. 2).
As to applying an improper standard, the Decision cited to MPEP
§2162 (Policy Underlying 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First
Paragraph [R-l 1.2013]), which “sets forth the minimum requirements for the
quality and quantity of information that must be contained in the patent to
justify the grant,” rather than MPEP §2163 (Guidelines for the Examination
of Patent Applications Under the 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C.
112, para. 1, “Written Description” Requirement [R-07.2015]), cited by
Appellant (App. Br. 20). MPEP §2163 states “The Guidelines do not
constitute substantive rulemaking and hence do not have the force and effect
of law.” Thus, no improper standard was used by Board, as the Guidelines
are for examination and not appeal. Further, Appellant merely provides
attorney argument that an incorrect standard was used, without setting forth
what the error is.
A “written description requirement for a patent specification applies
to all claims and requires that the patent specification objectively
demonstrate that the applicant actually invented—was in possession of—the
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Application 12/754,936
claimed subject matter . . (Ariad Pharmaceuticals, Inc. v. Eli Lilly and
Company, 598 F.3d 1336 (Fed. Cir. 2010). Further, “it is the specification
itself that must demonstrate possession. And while the description
requirement does not demand any particular form of disclosure, Carnegie
Mellon Univ. v. Hoffmann—La Roche Inc., 541 F.3d 1115, 1122
(Fed.Cir.2008), or that the specification recite the claimed invention in haec
verba, a description that merely renders the invention obvious does not
satisfy the requirement, Lockwood v. Am. Airlines, 107 F.3d 1565, 1571—72
(Fed.Cir.1997)” {Ariad at 1352). “Put another way, one skilled in the art,
reading the original disclosure, must immediately discern the limitation at
issue in the claims .... That inquiry is a factual one and must be assessed on
a case-by-case basis” (Purdue Pharma L.P. v. FauldingInc., 230 F.3d 1320,
1323 (Fed. Cir. 2000) (internal quotation marks and citations omitted).
As to Appellant’s contention the panel used an unreasonably narrow
focus on the Specification, we provide the following. Appellant points to
various portions of the Specification for support of a first semiconductor
layer comprising crystalline silicon. We find those cites support the recited
element when viewed in isolation. However, the appealed claims do not
recite that element in isolation; they recite it in combination with a particular
second semiconductor layer comprising an oxide semiconductor. We do not
find support for that combination. For example, Appellant’s Specification
mentions the term “oxide semiconductor” in paragraphs 43 and 129;
however, all these paragraphs describe is that a transistor can be an oxide
semiconductor. That is, there is nothing disclosing that a first semiconductor
layer comprises crystalline silicon and a second semiconductor layer
comprises an oxide semiconductor, as claimed. Appellant asserts the
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Application 12/754,936
Specification states the second semiconductor layer can be an oxide
semiconductor layer because an ordinarily skilled artisan would know one of
the processes described in the Specification (i.e., thermal oxidation) could
result in an oxide layer (Reh’g. Req. 6, 11, 13). This is attorney argument as
Appellant has not pointed to any evidence to support this assertion. Even if
we were to consider this attorney argument, we would find it unpersuasive.
Appellant has only indicated that a thermal oxide layer is one layer that
could be produced by the method, not addressing whether this is merely one
type of the layers that could be formed by this method. Thus, Appellant’s
argument does not support a finding of possession; rather, at most, the cited
portions of the Specification are a description that merely renders the
invention obvious, and therefore, does not satisfy § 112, first paragraph.
As to Appellant’s contention that an unreasonable distinction was
made between the term “property” and “material,” we do not agree.
Appellant’s Rehearing Request points out portions of the Specification that
only refer to the first and second semiconductor layers having different
properties (Reh’g. Req. 8, 9). As our Decision finds, Appellant’s
“Specification supports the first and second semiconductor layers have
different properties. However, it does not support the first semiconductor
layer being formed of a material different from the second semiconductor
layer. Materials and properties are not necessarily the same. That is, it is
not necessary that the material be different to have different properties; the
same material can have different properties depending on doping, charge
applied, etc.” (Dec. 5). Appellant does not dispute that the same material
can have different properties depending on doping or charge applied, but
responds “both semiconductor layers act as and include a channel formation
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Application 12/754,936
region for reasons discussed later and can be formed by entirely different
processes or materials at different times'1'’ (underline emphasis added)
(Reh’g. Req. 9). However, there are no cites to the Specification showing
where this is found. Appellant further states “ ‘Appellant’s specification then
goes on to identify various types of non-limiting transistors that could be
formed in accordance with the invention. This included identification of
different properties (e.g., single crystal, polycrystalline, microcrystalline,
amorphous, semi-amorphous, etc.), and different materials’ (a fact
apparently conceded by the Board in the Decision)” (underline emphasis
added) (id.). Again, Appellant does not point to where in the Specification
this is supported, or where in our Decision we make such a concession.
Lastly, Appellant concludes their disclosure proves they had
possession as each semiconductor layer has “a different property, and that
this different ‘property’ could be readily attained by manipulation of a
similar material or by selection of a different material for each
semiconductor layer based on the explicitly identified suitable materials for
‘a transistor’ (e.g., paragraphs [0037] and [0043])” (Reh’g. Req. 10).
Paragraph 37 recites “various types of transistors can be used as a transistor,
without limiting to a certain type. For example, a thin film transistor (TFT)
including a non-single-crystal semiconductor film typified by amorphous
silicon, polycrystalline silicon, microcrystalline (also referred to as semi-
amorphous) silicon, or the like can be used.” Paragraph 43 recites “A
transistor including a compound semiconductor or an oxide semiconductor
such as ZnO, a-InGaZnO, SiGe, GaAs, IZO, ITO, or SnO, a thin film
transistor obtained by thinning such a compound semiconductor or an oxide
semiconductor, or the like can be used........ Note that such a compound
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Application 12/754,936
semiconductor or an oxide semiconductor can be used for not only a channel
portion of the transistor but also other applications.” Based on these
disclosures, it appears the oxide semiconductor can be any type of oxide.
Also, as we noted previously, Appellant’s cites merely indicate that an oxide
semiconductor “can be” used as a semiconductor, not that a second
semiconductor layer is formed comprising an oxide semiconductor.
Appellant’s cited portions of the Specification are merely descriptions that
render the invention obvious, which is not an issue before us.
Because Appellant’s Specification only describes a first crystalline
semiconductor layer and does not describe any specific second oxide
semiconductor layer, Appellant’s Specification does not provide adequate
written description of the claimed invention.
DECISION
Appellant’s Request for Rehearing is granted to the extent that the
Decision was reconsidered, but is denied with respect to making any
changes thereto.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REQUEST FOR REHEARING DENIED
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