Ex Parte Majumdar et al

Patent Trial and Appeal Board

Jul 21, 2017

12488310 (P.T.A.B. Jul. 21, 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.
12/488,310 06/19/2009 Arun Majumdar BK-2001-B90-8 9253
07/25/20178156 7590
JOHN P. O'B ANION
O'BANION & RITCHEY LLP
400 CAPITOL MALL SUITE 1550
SACRAMENTO, CA 95814
EXAMINER
LIU, BENJAMIN T
ART UNIT PAPER NUMBER
2893
NOTIFICATION DATE DELIVERY MODE
07/25/2017 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):
docketing @ intellectual, com
jpo@intellectual.com
sek @ intellectual, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARIJN MAJUMDAR, ALT 8HAKOIJRI, TIMOTHY
D. SANDS, PEIDONG YANG, SAMUEL S. MAO,
RICHARD E. RUSSO, HENNING FEICK,
EICKE R. WEBER, HANNES KIND, MICHAEL HUANG,
HAOQUAN VAN. YIYING WU, and RONG FAN
Appeal 2016-007532
Application 12/488,310
Technology Center 2800
Before TERRY J. OWENS, MARK NAGUMO, and
JENNIFER R. GUPTA, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
rejection of claims 1—8, 10—13 and 15—23. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a population of nanowires. Claim 1 is
illustrative:
1. A population of nanowires, comprising:
a plurality a nanowires, each comprising:
Appeal 2016-007532
Application 12/488,310
a core of a first semiconductor material at least
partially surrounded by a sheath of a compositionally
different material;
wherein at least one of said core and said sheath has a
uniform diameter;
wherein said sheath material is synthesized; and
wherein the population of nano wires has a uniform
interwire diameter of less than or equal to approximately 50%
RMS across the population of nanowires.
Okajima
Chang
Westwater
Imamura (as translated)
The References
US 5,381,753
US 5,916,642
US 6,130,143
JP 5-95121 A
The Rejections
Jan. 17, 1995
June 29, 1999
Oct. 10, 2000
Apr. 16, 1993
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1—
8, 10, 13, and 15—23 over Imamura in view of Westwater, claim 11 over
Imamura in view of Westwater and Okajima, and claim 12 over Imamura in
view of Westwater and Chang.
OPINION
We reverse the rejections. We need address only the independent
claims, i.e., claims 1 and 19.1 Those claims require a population of
nano wires having a uniform interwire diameter of less than or equal to
approximately 50% RMS across the population of nanowires.
Imamura discloses a quantum wire structure comprising needle
crystals (1) made by forming on a GaAs substrate crystal (8) an oxidized
1 The Examiner does not rely upon Okajima or Chang for any disclosure that
remedies the deficiency in Imamura and Westwater as to the limitations in
the independent claims (Final Act. 9—11).
2
Appeal 2016-007532
Application 12/488,310
silicon layer (6) having windows therein formed by photolithography,
growing a silicon-doped GaAs needle crystal (2) in each window, forming a
gold drop (10) by vacuum evaporation on each silicon-doped GaAs needle
crystal (2), growing on the silicon-doped GaAs needle crystal (2) a
non-doped GaAs needle crystal (3) carrying the gold drop (10), and
enclosing the non-doped GaAs needle crystal (3) concentrically with
non-doped (4) and then silicon-doped (5) AlGaAs crystals flflf 15, 16;
Figs. 1—3) metalorganic vapor phase epitaxy (MOVPE). Alternatively, the
substrate (8) and the needle crystals (2, 3) can be silicon (| 22).2
Westwater makes quantum wires by forming on a single crystal
silicon substrate (1) an oxide film (formation assist film 11) having
openings (12a) therein, forming a metal (e.g., gold) catalyst/silicon alloy
droplet (13) in each opening (12a), growing under each metal alloy
droplet (13), by silane decomposition, a silicon wire (2) having a uniform
thickness in the longitudinal direction, removing the alloy droplets (13), and
reducing the diameter of the wires (2) by oxidizing the wires (2) to form an
oxide film (1 lb) thereon and then removing the oxide film (1 lb) (col. 9,
1. 59-col. 12,1. 4; Figs. 4, 12, 13).
The Examiner finds that one of ordinary skill in the art would have
used Westwater’s method to make Imamura’s silicon needle crystals (3) so
their diameter would be uniform, and that Imamura’s MOVPE method for
forming the undoped (4) and doped (5) AlGaAs crystals on the silicon
2 The Examiner finds that Imamura does not disclose that the individual
nanowires have at least a uniform diameter core or sheath, and does not
disclose a uniform interwire diameter of less than about 50% RMS across
the population of nano wires (Final Act. 2).
3
Appeal 2016-007532
Application 12/488,310
needle crystals (3) (116) “creates a layer of a uniform thickness on top [of] a
substrate which in this case would be the needle crystal 3 of fig. 2 of
Imamura” (Ans. 3—4), i.e., “[b]y etching the needle crystal core of Imamura
with the thinning process of Westwater and forming a core with a uniform
diameter, a sheath formed surrounding this uniform diameter core by the
MOVPE method would also have a uniform diameter. Thus, the population
of nanowires would have a uniform interwire diameter” (Ans. 4).
The Examiner has not provided evidence or technical reasoning which
indicates that Imamura’s MOVPE method necessarily produces a uniform
interwire diameter such that if Westwater’s method were used to make the
diameter of each of Imamura’s silicon needle crystals (3) uniform along its
length, the interwire diameter of the population of silicon needle crystals (3)
having undoped (4) and doped (5) AlGaAs crystals thereon would have a
uniformity of less than or equal to approximately 50 % RMS.
Thus, the Examiner has not set forth a factual basis which is sufficient
to support a conclusion of obviousness of the Appellants’ claimed invention.
See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior
art”). Accordingly, we reverse the rejections.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1—8, 10, 13, and 15—
23 over Imamura in view of Westwater, claim 11 over Imamura in view of
Westwater and Okajima, and claim 12 over Imamura in view of Westwater
and Chang are reversed.
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Application 12/488,310
It is ordered that the Examiner’s decision is reversed.
REVERSED
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