Ex Parte Ramachandran et alDownload PDFPatent Trial and Appeal BoardSep 19, 201211561868 (P.T.A.B. Sep. 19, 2012) Copy Citation 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. 11/561,868 11/20/2006 Balasubramanian Ramachandran 010804 USA FEP/OXD 8232 44257 7590 09/19/2012 PATTERSON & SHERIDAN, LLP - - APPM/TX 3040 POST OAK BOULEVARD, SUITE 1500 HOUSTON, TX 77056 EXAMINER CAMPBELL, NATASHA N. ART UNIT PAPER NUMBER 1714 MAIL DATE DELIVERY MODE 09/19/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BALASYBRANABUAB RAMACHANDRAN, TAE JUNG KIM, JUNG HOON SUN, JOUNG WOO LEE, HWA JOONG LIM, SANG PHIL LEE, and JOSEPH MICHAEL RANISH ____________ Appeal 2011-000788 Application 11/561,868 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, PETER F. KRATZ, and BEVERLY A. FRANKLIN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing of our Decision of August 29, 2012. In that Decision, we sustained the rejections of record. We have reconsidered our decision of August 29, 2012, in light of Appellants’ comments in the Request for Rehearing, and Appellants have not convinced us of error therein. Appeal 2011-000788 Application 11/561,868 2 On page 2 of the Request for Rehearing, Appellants argue that: the Board uses "naturally flow" to find that the additional elements in Claim 16 were inherently included in subject matter suggested by the combination of references without explanation as to why the missing elements asserted to "naturally flow" from the combined references are obvious. The legal authority cited by the Board refers to additional advantages, not additional claim elements, and provides no guidance for the present case. Thus, the Board erroneously asserts that claim elements not described in the cited references are inherent, and fails to support rejection of Claims 16-20 as obvious over the cited references. However, as we stated on page 4 of our Decision: The Examiner explains that, although the applied art does not explicitly teach that the process as modified would cause deposited phosphorus dopants to volatilize, because Savas utilizes similar conditions as described in Appellants' Specification in conducting the process, then such a result would occur when conducting the modified process according to the teachings of the applied art. Ans. 6. In other words, implicit in the Examiner's position is that the additional advantage of phosphorus deposited dopant removal would have flowed naturally from the proposed combination of Tanaka, MacLeish and Savas, and we agree. Thus, it is the Examiner’s position that the claimed subject matter pertaining to applying heat “to volatize the deposited phosphorus”, as recited in claim 16, such that removal of this volatized phosphorus would occur (also recited in claim 16), when the chamber is exhausted, would have flowed naturally from the teachings of the applied references. As quoted, supra, Appellants seem to draw a distinction between “additional advantages” versus “additional claim elements”. In the instant case, the additional advantage is also a claim recitation, and is met by the applied art, in either form. Appeal 2011-000788 Application 11/561,868 3 In conclusion, based on the foregoing, Appellants’ Request is granted to the extent that we have reconsidered our Decision, but is denied with respect to making any change therein. DENIED tc Copy with citationCopy as parenthetical citation