Ex parte TANG et al.

Board of Patent Appeals and Interferences

Aug 7, 1998

08201963 (B.P.A.I. Aug. 7, 1998)

Application for patent filed February 25, 1994. 1
According to applicants, the application is a continuation-in-
part of Application 08/151,678, filed November 15, 1993.
1
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(2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CHA-MEI TANG, ANTONIO C. TING
AND THOMAS A. SWYDEN
_____________
Appeal No. 98-0250
Application 08/201,9631
______________
ON BRIEF
_______________
Before HAIRSTON, KRASS, and FLEMING, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
Appeal No. 98-0250
Application No. 08/201,963
According to the examiner (paper number 14), the2
amendment had the effect of overcoming the indefiniteness
rejection of claims 9 through 15, 18 through 27 and 32.
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims 9
through 32. In an Amendment After Final (paper number 13),2
claims 9, 18, 23 and 32 were amended, and claim 15 was
canceled. Accordingly, claims 9 through 14 and 16 through 32
remain before us on appeal.
The disclosed invention relates to a cold field emitter
system for producing an electron beam.
Claim 23 is illustrative of the claimed invention, and it
reads as follows:
23. A cold field emitter system for producing a
collimated electron beam, said field emitter comprising:
a substrate;
a field emitter on said substrate;
a gate spaced apart from said emitter, said gate having a
gap disposed to permit passage of said beam through said gap;
a lens section spaced apart from said emitter and said
gate, said lens section having a gap, said gap in said lens
together with said gap in said gate opening to form a conic
frustrum;
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Application No. 08/201,963
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wherein said emitter responsive to said gate emits said
electron beam, said beam propagating to said gate and through
gap in said gate, to said lens and through gap in said lens.
The references relied on by the examiner are:
Hughes et al. (Hughes) 3,436,584 Apr. 1,
1969
Kane et al. (Kane) 5,191,217 Mar. 2,
1993
Jones et al. (Jones) 5,475,280 Dec. 12,
1995
(effective filing date Mar. 4,
1992)
Claims 9 through 14 and 16 through 32 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Kane in view
of Jones and Hughes.
Reference is made to the final rejection, the brief and
the answer for the respective positions of the appellants and
the examiner.
OPINION
We have carefully considered the entire record before us,
and the obviousness rejection of claims 9 through 14, 16
through 22 and 28 through 32 is reversed because these claims
are too indefinite for an obviousness determination, and the
obviousness rejection of claims 23 through 27 is reversed
because these claims are not obvious based upon the teachings
Appeal No. 98-0250
Application No. 08/201,963
Webster’s New Collegiate Dictionary lists “frustum,” and3
not “frustrum.”
4
of the applied prior art. As indicated infra, a new ground of
rejection of claims 9 through 14, 16 through 22 and 28 through
32 has been entered under the provisions of 37 CFR § 1.196(b).
Turning first to the obviousness rejection of claims 23
through 27, Kane discloses (Figure 1) all of the claimed cold
field emitter structure, except for a “conic frustrum” formed3
by both the gap in the lens electrode and the gap in the gate
electrode. Jones discloses the use of a “conic frustrum” in a
gate electrode 47 of a cold field emitter, and Hughes
discloses the use of a “conic frustrum” in a lens electrode
20. The only teaching of record that uses a “conic frustrum”
opening through both the lens electrode and the gate electrode
of the same cold field emitter device is appellants’ disclosed
and claimed invention. Since the examiner is prohibited from
using appellants’ disclosed and claimed invention in an
obviousness rejection, we will reverse the 35 U.S.C. § 103
rejection of claims 23 through 27.
A prior art rejection can not be sustained if the
hypothetical person of ordinary skill in the art would have to
Appeal No. 98-0250
Application No. 08/201,963
5
make speculative assumptions concerning the meaning of claim
language. See In re Steele, 305 F.2d 859, 862-63, 134 USPQ
292, 295 (CCPA 1962). In claims 9 and 16, a “conic frustrum”
is not possible if the top gate diameter is “at least as
large” as the bottom gate diameter. A “conic frustrum” can
only be created if one diameter is larger than the other
diameter. In claim 9, how can a “cavity region” be “selected
from the group consisting of”? What are the metes and bounds
of such a “cavity region”? In the last line of claim 16, it
is not clear what the phrase “and at most” means in light of
the confusion concerning the relative diameters of the top and
the bottom gate diameters. In claim 16, it is not clear
whether the “first” lens electrode and the “at least one lens
electrode” are the same lens electrode. If the two phrases
are not referring to the same lens electrode, then it appears
that the disclosure does not support three lens electrodes.
Claims 18, 28 and 32 state that the thickness of the lens in
the direction of beamflow is about that of the “thickness” of
the gap of the lens. On the other hand, the disclosure
(specification, pages 14 and 18) compares the thickness of the
lens with the diameter of the gap in the lens. Appellants
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Application No. 08/201,963
6
compare the thickness of the gap to the diameter of the gap
(Brief, page 10), whereas the examiner is of the opinion that
the thickness of the gap is the same dimension as the
thickness of the lens, and is in the direction of beamflow
(Answer, page 7). We are aware of the fact that appellants
may be their own lexicographer, but the use of the term
“thickness” to describe a diameter has led to confusion as to
the location of this “thickness.”
REJECTION UNDER 37 CFR § 1.196(b)
In view of the foregoing, we hereby enter the following
new ground of rejection:
Claims 9 through 14, 16 through 22 and 28 through 32 are
rejected under the second paragraph of 35 U.S.C. § 112 as
being indefinite.
DECISION
The decision of the examiner rejecting claims 9 through
14 and 16 through 32 under 35 U.S.C. § 103 is reversed.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b) (amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
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Application No. 08/201,963
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37 CFR § 1.196(b) provides that “[a] new ground of
rejection shall not be considered final for purposes of
judicial review.”
37 CFR § 1.196(b) also provides that the appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner . . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals
and Interferences upon the same record . . . .

No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
37 CFR § 1.196(b)
Appeal No. 98-0250
Application No. 08/201,963
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KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )

Appeal No. 98-0250
Application No. 08/201,963
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Associate Counsel (Patents)
Naval Research Laboratory
Washington, D.C. 20375-5325