Ex Parte Yamazaki et al

Patent Trial and Appeal Board

Aug 18, 2017

13528009 (P.T.A.B. Aug. 18, 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.
13/528,009 06/20/2012 Shunpei YAMAZAKI 0756-9814 9158
31780 7590 08/22/2017
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
08/22/2017 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 SHUNPEI YAMAZAKI,
MASAYUKI SAKAKURA, RYOSUKE WATANABE,
JUNICHIRO SAKATA, KENGO AKIMOTO, AKIHARU MIYANAGA,
TAKUYA HIROHASHI, and HIDEYUKI KISHIDA
Appeal 2016-002334
Application 13/528,009
Technology Center 2800
Before ST. JOHN COURTENAY III, JOHN A. EVANS, and
SCOTT B. HOWARD, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—4, 6—14, 16—25, and 27—32, which are all the claims
pending in this application.1 Claims 33—56 were withdrawn in response to a
restriction requirement. Claims 5, 15, and 26 are cancelled. (See App. Br.
(Claims App. A) 39, 40, 42, respectively).
An oral hearing was conducted on August 15, 2017. We have
jurisdiction under 35 U.S.C. § 6(b). We Reverse.
1 We refer herein to the Final Office Action, mailed November 10, 2014;
the Appeal Brief, filed on May 18, 2015; the Reply Brief, filed on December
7, 2015; and the Examiner’s Answer, mailed October 7, 2015.
Appeal 2016-002334
Application 13/528,009
STATEMENT OF THE CASE
Invention
The disclosed and claimed invention on appeal “relates to a transistor
formed using an oxide semiconductor and a display device including the
transistor.” (Spec. 11).
Claim 1 is illustrative, and is reproduced below:
1. A transistor comprising:
a gate electrode layer;
a gate insulating layer adjacent to the gate electrode layer;
an oxide semiconductor layer adjacent to the gate
electrode layer with the gate insulating layer therebetween, the
oxide semiconductor layer including a channel region; and
an oxide insulating layer in contact with the oxide
semiconductor layer, wherein the oxide semiconductor layer is
located between the gate insulating layer and the oxide insulating
layer,
wherein the oxide semiconductor layer includes a first
metal, a second metal, and a third metal,
wherein the first metal is indium, the second metal is zinc,
and the third metal is a different metal from indium and zinc, and
[L] wherein at least part of the channel region includes
crystals which are c-axis-oriented in a direction perpendicular
to a surface of the oxide semiconductor layer.
(Bracketed matter and emphasis added with respect to contested limitation
L, which is identically recited in remaining independent claims 12 and 22).
Rejections
A. Claims 1—4, 6—14, 16—25, and 27—32 are rejected under pre-AIA 35
U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement.
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Application 13/528,009
B. Claims 1—4, 6—14, 16—25, and 27—32 are rejected under pre-AIA 35
U.S.C. § 112, first paragraph, for failing to comply with the
enablement requirement.
C. Claims 1—4, 6—14, 16—25, and 27—32 are rejected under pre-AIA 35
U.S.C. § 112, second paragraph, as being indefinite.
D. Claims 1—3, 7—13, and 17—21, are rejected under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under pre-AIA 35
U.S.C. § 103(a), as obvious over Akimoto et al. (US 2007/0072439
Al; publ. Mar. 29, 2007) (hereinafter “Akimoto”).
E. Claims 4, 6, 14, and 16 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being obvious over the combined teachings and suggestions of
Akimoto.
F. Claims 22—25 and 27—32 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over the combined teachings and
suggestions of Wager, III et al. (US 7,339,187 B2; iss. Mar. 4, 2008)
(hereinafter “Wager”) in view of Sugihara et al. (US 2006/0244107
Al; publ. Nov. 2, 2006) (hereinafter “Sugihara”), and further in view
of Akimoto
ANALYSIS
Rejection A under pre-AIA § 112, first paragraph (written description)
Our reviewing court guides the written description “must clearly
allow persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc) (internal citation and quotations
omitted). The test is whether the disclosure “conveys to those skilled in the
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Application 13/528,009
art that the inventor had possession of the claimed subject matter as of the
filing date.” Id. “[Ajctual ‘possession’ or reduction to practice outside of
the specification is not enough. Rather,... it is the specification itself that
must demonstrate possession.” Id. at 1352; see also PowerOasis, Inc. v. T-
Mobile USA, Inc., 522 F.3d 1299, 1306-07 (Fed. Cir. 2008) (explaining that
§ 112, first paragraph, “requires that the written description actually or
inherently disclose the claim element”) (emphasis added).
[I]t is “not a question of whether one skilled in the art might be
able to construct the patentee’s device from the teachings of the
disclosure .... Rather, it is a question whether the application
necessarily discloses that particular device.” ... A description
which renders obvious the invention for which an earlier filing
date is sought is not sufficient.
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
1997) (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963))
(emphasis added).
Issue — Rejection A, written description
In the Final Office Action (id. at 3—4), the Examiner finds insufficient
written description support for the claim 1 language: “the oxide
semiconductor layer including a channel region;... wherein at least
part of the channel region includes crystals which are c-axis-oriented in
a direction perpendicular to a surface of the oxide semiconductor
layer.” (See identical language recited in independent claims 12 and 22)
(emphasis added).
Appellant disagrees, and contends, inter alia:
Contrary to the Examiner's distortions, the Applicant has
always argued that “crystals” as recited in claims 1, 12 and 22,
are supported in the detailed disclosure; including the portions of
the disclosure that explicitly describe the size of the crystals (e.g.,
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page 2, lines 18 to 26; page 3, lines 18 to page 4, line 9; page 5,
lines 4 to 14; page 9, line 27 to page 10, line 22; page 12, lines
18 to 28). What the Examiner fails to recognize is that the fact
that a specific description (i.e., with respect to crystal size) is
explicitly provided does not negate written description support
for broader claim terminology.
(App. Br. 14) (emphasis omitted).
In the Reply Brief, Appellants point to specific paragraphs within the
aforementioned pages 3 and 5 of the Specification (see App. Br. 14) which
provide literal support:
the present invention claims a transistor, wherein inter alia at
least part of the channel region includes crystals which are
c-axis-oriented in a direction perpendicular to a surface of the
oxide semiconductor layer. This feature is literally supported in
the specification at least at paragraphs [0012] and [0019]. The
supporting disclosure provides additional examples and
embodiments to demonstrate possession of the claimed
invention, all of which demonstrate possession of this invention.
(Reply Br. 3).
As indicated by Appellants {id.), we find at least paragraphs 12 and 19
of the original Specification provide literal support for the contested c-axis
crystals: “The first region of the oxide semiconductor layer is formed of
microcrystals c-axis-oriented in a direction perpendicular to a surface of the
layer.” (Spec. ^fl[ 12, 19) (emphasis added). See also Appellants’ Figure
29A (perpendicular arrow 3), and Figure 36 (“c” and associated vertical
arrow).
We also particularly note that all claims on appeal are original claims
(no amendments). Our reviewing court guides: “Original claims are part of
the specification and in many cases will satisfy the written description
requirement.” Crown Packaging Tech., Inc. v. Ball Metal Beverage
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Container Corp., 635 F.3d 1373, 1380 (Fed. Cir. 2011) (citing Ariad
Pharm., 598 F.3d at 1349); accord In re Roller, 613 F.2d 819, 823—24
(CCPA 1980) (original claims constitute their own description); see In re
Gardner, 475 F.2d 1389 (CCPA 1973); In re Wertheim, 541 F.2d257 (CCPA
1976); see also Manual of Patent Examining Procedure (“MPEP”)
§ 2163(1) (9th Ed., Rev. 07.2015, Nov. 2015).
Therefore, on this record, we find a preponderance of the evidence
supports Appellants’ contentions traversing written description rejection A.
(App. Br. 11—18). Accordingly, we reverse Rejection A of claims 1—4,
6—14, 16—25, and 27—32, under the written description requirement.
Rejection B under pre-AIA § 112, first paragraph (enablement)
The first paragraph of35U.S.C. § 112 requires that the manner of
making and using the claimed invention must be clearly set forth in the
Specification:
The specification shall contain a written description of the
invention, and of the manner and process of making and using
it, in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same ....
(Pre-AIA 35 U.S.C. § 112, first paragraph (emphasis added)).
Enablement is a question of law involving underlying factual
inquiries. See Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365
(Fed. Cir. 1997). The “enablement requirement is satisfied when one skilled
in the art, after reading the specification, could practice the claimed
invention without undue experimentation.” AK Steel Corp. v. Sollac and
Ugine, 344 F.3d 1234, 1244 (Fed. Cir. 2003) (internal citation omitted).
Whether undue experimentation is required is a legal conclusion reached by
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weighing several underlying factual inquiries. In re Wands, 858 F.2d 731,
736—37 (Fed. Cir. 1988) holds that whether undue experimentation is
required is a:
conclusion reached by weighing many factual considerations . . .
including:] (1) the quantity of experimentation necessary, (2)
the amount of direction or guidance presented, (3) the presence
or absence of working examples, (4) the nature of the invention,
(5) the state of the prior art, (6) the relative skill of those in the
art, (7) the predictability or unpredictability of the art, and (8) the
breadth of the claims.[2]
Here, the Examiner concludes the Specification is “enabling for a
certain material composition of the oxide semiconductor layer such as
formed by the target of In203, Ga2C>3 and ZnO having a molar ratio of 1:1:1:
or 1:1:2 as disclosed in paragraph [0036] of [the] current Application.”
(Final Act. 4).
Issue — Rejection B, enablement
However, the Examiner further concludes the Specification:
does not reasonably provide enablement for any material
composition of the oxide semiconductor layer such as InO lightly
doped with zinc and gallium or GaO lightly doped with zinc and
indium. The specification does not enable any person skilled in
the art to which it pertains, or with which it is most nearly
connected, to make the invention commensurate in scope with
these claims. Applicants’ original disclosure is directed to a
2 See Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1372 (Fed. Cir.
1999) (“The Wands factors, when applied from the proper temporal
perspective ... are a useful methodology for determining enablement. . .”).
These factors while illustrative are not mandatory. Enzo Biochem, Inc.,
188 F.3d at 1371. (Emphasis added). What is relevant depends on the facts,
and although experimentation must not be undue, a reasonable amount of
routine experimentation required to practice a claimed invention does not
violate the enablement requirement. Id. at 1371.
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certain material composition of the oxide semiconductor layer
that includes c-axis-oriented microcrystals, but Applicants did
not enable one of ordinary skill in the art to make a transistor by
using, for example, In203: (Zn, Ga) where crystals are c-axis-
oriented. This position is further supported by the disclosure of
Haga (US 2004/0023432) where c-axis-oriented crystals are
formed due to a strong ionic bonding of Zn and O (Haga, lines
1-4 of [0007]). Therefore, the claimed oxide semiconductor
layer cannot include c axis-oriented crystals where the amount of
zinc atoms is miniscule such as one or a few zinc atoms doped to
the In203, where the predominant bond would be a covalent bond
between In and O.
(Final Act. 4—5).
Appellants disagree that the claimed invention is not enabled, and
contend, inter alia:
The Applicant indeed understands that the “full scope of the
claimed invention” precludes a structure in which crystals having
the claimed c-axis orientation are not formed, while the
Examiner's remarks fail to appreciate that his hypothetical
structure in which “the claimed oxide semiconductor layer
cannot include c-axis-oriented crystals where the amount of zinc
atoms is miniscule” (page 4, Id.) is literally outside the full scope
of the claimed invention. Thus, as the Applicant has already
reasoned, the Examiner’s hypothetical is not germane to the
enablement inquiry.
Aside from the Examiner's failure to understand this basic
and obvious principle, i.e. that enablement is only required with
respect to the invention defined by the claims, the Examiner
ignores a more fundamental concept that:
“[T]o provide effective incentives, claims
must adequately protect inventors. To demand that
the first to disclose shall limit his claims to what he
has found will work or to materials which meet the
guidelines specified for [‘]preferred[’] materials in
a process such as the one herein involved would not
serve the constitutional purpose of promoting
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Application 13/528,009
progress in the useful arts.” In re Goffe, 542 F.2d
564, 567 (CCPA 1976).
Contrary to the Examiner’s requirement, enablement does
not require disclosure of a “working example” of every species
falling within the entire scope of the claims. Instead, MPEP
§ 2164.03 notes that “the scope of the required enablement varies
inversely with the degree of predictability involved, but even in
unpredictable arts, a disclosure of every operable species is not
required and that [‘a] single embodiment may provide broad
enablement in cases involving predictable factors, such as
mechanical or electrical elements[’]” (citing In re Vickers, 141
F.2d 522, 526-27 (CCPA 1944) and In re Cook, 439 F.2d 730,
734 (CCPA 1971 )). It is sufficient that one skilled in the art is
enabled to make and use the entire scope of the claimed invention
without undue experimentation.
(App. Br. 20-21) (emphasis omitted).
On this record, we find the Examiner has not fully developed the
record to establish that undue experimentation would be required to
practice the claimed invention, nor has the Examiner specifically applied the
Wand factors in support of enablement rejection B.
Therefore, we agree with Appellants the enablement rejection is
unsupported, for essentially the same reasons argued in the Briefs (App. Br.
20-21; Reply Br. 10—16). Accordingly, we are constrained on this record to
reverse the Examiner’s enablement rejection B of claims 1—4, 6—14, 16—25,
and 27—32, under 35 U.S.C. § 112, first paragraph.
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Rejection C under pre-AIA § 112, second paragraph (indefiniteness)
Issue — Rejection C, indefiniteness
In the Final Office Action (id. at 5—8), the Examiner sets forth six
reasons that independent claims 1,12, and 22 are indefinite under § 112,
second paragraph:
Examiner’s legal conclusion (1):
Regarding claims 1, 12 and 22, it is not clear whether
“the third metal is a different metal from indium and zinc” can
be any metal such as Hf, La, Y, Ba, Sr, Sc, Cd, Hg, Te, Pd, Pt,
Au, Ag, Cu, Ir, W, etc., especially because the third metal
element is a part of “crystals which are c-axis-oriented”, and
Applicants did not originally disclose any metal element
would do.
(Final Act. 5) (emphasis added).
Examiner’s legal conclusion (2):
Also regarding claims 1, 12 and 22, it is not clear what
Applicants claim by the limitation “a surface” of the oxide
semiconductor layer, because the oxide semiconductor layer
(103 in Fig. 1 B of current Application) has a top surface and
side surfaces. It appears that Applicants originally disclosed and
previously claimed that the microcrystals are oriented
perpendicular to the side surfaces as well as the top surface of the
oxide semiconductor layer from original claims 5,15 and 26 that
Applicants cancelled previously. However, this is physically
impossible in that the horizontal top and inclined side
surfaces of the oxide semiconductor layer 103 cannot be both
c-axis-oriented.
(Final Act. 5—6) (emphasis added).
Examiner’s legal conclusion (3):
Further regarding claims 1,12 and 22, it is not clear how
Applicants can claim “crystals which are c-axis-oriented in a
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direction perpendicular to a surface of the semiconductor layer”
without first claiming the shape of the oxide semiconductor
layer. Applicants are directed to the four exemplar shapes of the
oxide semiconductor layer on the following page. It is clear that,
unless at least the top surface of the oxide semiconductor layer is
flat, the limitation “crystals which are c-axis-oriented in a
direction perpendicular to a surface of the oxide semiconductor
layer” may not be well-defined, because the triangular-shaped
or round-shaped oxide semiconductor layer cannot include
well-defined c-axis-oriented crystals.
(Final Act. 6) (emphasis added).
Examiner’s legal conclusion (4):
Still further regarding claims 1, 12 and 22, it is not clear
whether the limitation “at least part of the channel region
includes crystals which are c-axis-oriented in a direction
perpendicular to a surface of the oxide semiconductor layer . . .
” suggests that the entirety “of the channel region includes
crystals which are c-axis-oriented in a direction perpendicular to
a surface of the oxide semiconductor layer”, which does not
appear to be possible even for the oxide semiconductor layer
shown in Fig. 1 B of current Application as shown in Example
(1) below [{see Final Act. 7)], which shows three different c-
axes, which does not make sense.
(Final Act. 6—7) (emphasis in original omitted and emphasis added).
Examiner’s legal conclusion (5):
Still further regarding claims 1, 12 and 22, it is not clear
whether the limitation “at least part of the channel region
includes crystals which are c-axis-oriented in a direction
perpendicular to a surface of the oxide semiconductor layer
(emphasis added)” suggests that the entirety “of the channel
region includes crystals which are c-axis-oriented in a direction
perpendicular to a surface of the oxide semiconductor layer”,
which does not appear to be possible, because Applicants may
have claimed that the entirety of the oxide semiconductor
layer 103 consists of crystals, which would correspond to a
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porous oxide semiconductor layer consisting of crystals without
any other material such as an amorphous oxide
semiconductor material filling the gaps between the crystals.
(Final Act. 8) (emphasis added).
Examiner’s legal conclusion (6):
Regarding claims 6, 16 and 27, it is not clear what
Applicants claim by the “microcrystals”. It appears that
Applicants' definition of "microcrystals" are different from
common usage of “microcrystals” as acknowledged by
Applicants in paragraph [0033] of current Application, but
Applicants did not specifically claim or define a size of the
microcrystals in claims 6, 16 and 27.
(Final Act. 8).
Appellants ’ Responses for Rejection C under § 112, second paragraph
Appellants disagree with the Examiner’s legal conclusions 1—6 (Final
Act. 5—8). Regarding the Examiner’s legal conclusion (1), Appellants
contend, inter alia:
the claims do not recite any arbitrary grouping of metal elements
but instead require both that the third metal be different from
indium and zinc and that the separately claimed recitation
regarding c-axis oriented crystals is achieved. The Official
Action provides no explanation as to why understanding “a
different metal from indium and zinc” would be confusing or
unclear, particularly when construed in combination with the
separate requirement. Moreover, it appears that the Official
Action again improperly mingles and distorts the standards under
the “indefmiteness” prong of § 112 and the “written description”
requirement.... Under either inquiry, however, the Applicant
is not required to “originally disclose” that an oxide
semiconductor layer having “any metal” would achieve the
claimed c-axis-orientation.
(App. Br. 24).
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Regarding the Examiner’s legal conclusion (2), Appellants contend,
inter alia:
For the sake of clarification, the independent claims recite
that “at least part of the channel region includes crystals which
are c-axis-oriented in a direction perpendicular to a surface of the
oxide semiconductor layer,” not that “the horizontal top and
inclined side surfaces of the oxide semiconductor layer” are
“both c-axis oriented.” In any event, the Applicant respectfully
notes that the Official Action improperly appears to interpret “a
surface44 to mean “every surface,” contrary to the explicit
language of the claims, and once again gives an unreasonable
interpretation to the claims in order for the sake of obfuscating
analysis under § 112.
(App. Br. 25).
Regarding the Examiner’s legal conclusion (3), Appellants contend,
inter alia:
However, since the claims require that the crystals achieve
the claimed c-axis orientation with respect to “a surface,” the
Applicant respectfully submits that assertions of the Official
Action are on their face improper and contradict the explicit
language used in the claims.
(App. Br. 25).
Regarding the Examiner’s legal conclusion (4), Appellants contend,
inter alia:
The Examiner's reply misses the entire, obvious point, which is
that the claims do not require crystals to be c-axis oriented in a
direction perpendicular to every surface of the oxide
semiconductor layer, but merely “a surface.” The Examiner
envisions a superficial scenario in which crystals must be c-axis
oriented to both “the horizontal top and inclined side surfaces of
the oxide semiconductor layer44 (i.e., every surface) However,
the Examiner’s “straw man44 scenario is irrelevant because the
claims only require that c-axis orientation with respect to “a
surface44 not every surface.
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(App. Br. 26) (emphasis omitted).
Regarding the Examiner’s legal conclusion (5), Appellants contend,
inter alia:
The Examiner's speculation that “the limitation ‘at least
part of the channel region includes crystals which are c-axis-
oriented in a direction perpendicular to a surface of the oxide
semiconductor layer’ can be directed to a configuration where
the entirety of the horizontal top surface and inclined side
surfaces include crystals which are c-axis oriented in a direction
perpendicular to the horizontal top surface and the inclined side
surfaces” misapprehends the legal standard of definiteness under
§ 112, second paragraph. That standard requires that the claims
particularly point out and distinctly claim the subject matter
which the applicant regards as his or her invention, in part to
ensure that the scope of the claims is clear such that the public is
informed of the boundaries of what constitutes infringement of
the patent. Assuming all other limitations of the claims are met,
the public would unarguably conclude that a device in which “the
entirety of the horizontal top surface and inclined side surfaces
include crystals which are c-axis oriented in a direction
perpendicular to the horizontal top surface and the inclined side
surfaces” (page 38, Id.) is squarely within the scope of the claim
limitation that “at least part of the channel region includes
crystals which are c-axis-oriented in a direction perpendicular to
a surface of the oxide semiconductor layer.” Thus, the limitation
is definite, particularly under the Examiner's own hypothetical
structure, as best understood.
(App. Br. 26—27) (emphasis omitted).
Regarding the Examiner’s legal conclusion (6), Appellants refer to
MPEP § 2173 (Applicants can be their own lexicographers), and contend,
inter alia:
if a person having ordinary skill in the art understands the claim
term “microcrystals” to mean crystals of a certain dimension, as
recited in the dependent claims, then that person must necessarily
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understand the broader term “crystals,” as recited in the
independent claims. In other words, the independent claims are
directed inter alia to crystals which are c-axis-oriented in a
direction perpendicular to a surface of the oxide semiconductor
layer; the dimension of these crystals is not the focus of the
independent claims but, instead, is recited in the narrower
dependent claims, in accordance with customary claim drafting.
(App. Br. 29) (emphasis omitted).
After reviewing the record, we find Appellants’ arguments (App. Br.
24—29) persuasive, as advanced in response to the Examiner’s legal
conclusions 1—6, (Final Act. 5—8), as pertaining to Rejection C of
independent claims 1, 12, and 22.
We particularly note all claims on appeal are directed to an apparatus
structure of clearly identified layers, elements, or materials: “A transistor
comprising: . . . .” (Independent claims 1, 12, and 22). We find at least
some of the Examiner’s legal conclusions 1—6 appear to be erroneously
premised on purported deficiencies regarding the claims as considered under
Rejections A and B (i.e., under § 112, first paragraph, written description
and enablement). However, we have reversed Rejections A and B for the
reasons discussed above.
Moreover, “[bjreadth is not indefmiteness.” SmithKline Beecham
Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005) (citing In re
Gardner, 427 F.2d 786, 788 (CCPA 1970)). The fact that a claim is broad
does not mean that it is indefinite, that is, undue breadth is not
indefmiteness. In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977); In re
Miller, 441 F.2d 689, 693 (CCPA 1971); see MPEP § 2173.04 (“Breadth Is
Not Indefmiteness”).
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Here, it is our view that the plain language of apparatus claims 1—4,
6—14, 16—25, and 27—32 (“A transistor comprising: . . .”) is not indefinite.
Moreover, the Examiner has not developed the record to establish
indefmiteness by applying the holding of Ex parte Miyazaki, 89 USPQ2d
1207, 1211 (BPAI 2008) (precedential), to the claims before us on appeal.
See MPEP § 2173.05(b)(II).
Therefore, for essentially the same reasons argued by Appellants
(App. Br. 24—29), we are constrained on this record to reverse the
Examiner’s rejection C of claims 1—4, 6—14, 16—25, and 27—32, under pre-
AIA 35 U.S.C. § 112, second paragraph.
Rejection D of Claims 1—3, 7—13, and 17—21 under §§ 102(b)/! 03 (a)
Issue: Under § 102(b), did the Examiner err in finding that Akimoto
expressly or inherently discloses contested limitation L:
“wherein at least part of the channel region includes crystals which
are c-axis-oriented in a direction perpendicular to a surface of the oxide
semiconductor layer” (emphasis added), within the meaning of independent
claims 1 and 12? 3
Or, in the alternative,
Issue: Under § 103(a), did the Examiner err in finding that Akimoto
would have taught or suggested contested limitation L, within the meaning
of independent claims 1 and 12? See n.3, infra.
3 We give the contested claim limitation the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997).
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Regarding §§ 102(b)/l 03(a) Rejection D of claim 1, the Examiner
finds:
Akimoto et al. further disclose that the oxide
semiconductor layer (404 in Fig. 4D) is crystallized by LRTA
performed at 250-570 °C and for duration of 1 minute - 1 hour
([0107]).
Therefore, either (1) it is inherent that at least part of the
channel region of Akimoto et al. includes crystals which are
c-axis-oriented in a direction perpendicular to a surface of the
oxide semiconductor layer by the LRTA performed at 250-570
°C and for duration of 1 minute -1 hour or (2) it would have been
obvious to one of ordinary skill in the art at the time the invention
was made that at least part of the channel region of Akimoto et
al. can include crystals which are c-axis-oriented in a direction
perpendicular to a surface of the oxide semiconductor layer by
the LRTA when the annealing temperature is in the range of 500-
570 °C out of the whole range of 250-570 °C and the duration of
the annealing is in the range of 1-10 minutes out of the whole
range of 1 minute - 1 hour, because (a) Applicants originally
disclosed the temperature range of 500-750 °C and the duration
of 1-10 minutes for the annealing to obtain the “crystals which
are c-axis-oriented in a direction perpendicular to a surface of the
oxide semiconductor layer” as disclosed in paragraphs [0070]-
[0071] of current Application, and (b) the annealing temperature
and duration of the annealing can be controlled to optimize the
crystallinity and electrical property of the oxide semiconductor
layer to improve device performance.
(Final Act. 10) (emphasis added).
Regarding anticipation under §§ 102(b)/103(a) Rejection D of
claim 1, Appellants contend, inter alia:
Applicant respectfully disagrees and traverses the
assertions of the Official Action. Initially, the alternative
materials and formation conditions described in Akimoto with
respect to the alleged oxide semiconductor layer 404 are not
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limited to those selectively asserted by the Official Action. There
is no reasonable basis to construe Akimoto as only limited to the
materials and formation conditions asserted by the Office. Since
Akimoto is not so limited as set forth by the Office, there is no
reasonable basis for finding inherency.
(App. Br. 31).
Appellants cite, inter alia, In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) in support (“Inherency . . . may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient”). (App. Br. 31).
Regarding obviousness under §§ 102(b)/103(a) Rejection D,
Appellants contend, inter alia:
the Examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the
teachings of the applied prior art (MPEP § 2112). Also, the
examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness (MPEP § 2142). The
Official Action does not satisfy this standard for finding a feature
inherent.
(App. Br. 32) (emphasis omitted).
Appellants further contend, inter alia:
[Cjontrary to the Official Action (page 10, Paper No. 20141103),
“paragraphs [0070]-[0071] of current Application” are not
prior art. Therefore, there is no teaching or motivation in the
prior art to include crystals having the claimed c-axis
orientation. Likewise, the secondary references have
similarly not been shown to necessarily address each and all
claim limitations, which the Office solely derives from the
Applicant's disclosure. Because the Official Action has not
established a necessary or obvious teaching in the prior art with
respect to all claim limitations, a prima facie case of anticipation
or obviousness has not been established.
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(App. Br. 33) (emphasis in original omitted and emphasis added).
Regarding the Examiner’s finding of inherency as pertaining to
anticipation under §§ 102(b)/103(a) rejection D, we agree with Appellants
that the guidance of Robertson, 169 F.3d at 745, is applicable here.
(“Inherency . . . may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient”). (See App. Br. 31).
On this record, we find speculation would be required to decide the
question of whether the LRTA processes described in Akimoto’s paragraphs
81 and 107, which are similar to Appellants’ rapid thermal annealing (RTA)
treatments (Spec. Tflf 70-71), would have resulted in Appellants’ claimed
structure: “wherein at least part of the channel region includes crystals
which are c-axis-oriented in a direction perpendicular to a surface of the
oxide semiconductor layer.'1'’ (Claims 1, 12, 22) (emphasis added).
We decline to engage in speculation.
In any event, although an apparatus may anticipate a process (if, in
its normal and usual operation, the apparatus will perform the steps of the
claimed process),4 the reverse is not true. Thus, the steps or acts of the
process the Examiner relies on in Akimoto (H 81, 107) for purportedly
producing the claimed c-axis-oriented crystals cannot anticipate the
structure of Appellants’ claimed transistor apparatus. (See Independent
Claims 1, 12, and 22).
4 See In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986); See also MPEP
§ 2112.02(11) (discussing “process of use” claims).
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Regarding the Examiner’s alternative finding of inherency as
pertaining to obviousness under §§ 102(b)/103(a) rejection D, our
reviewing court has long “recognized that inherency may supply a missing
claim limitation in an obviousness analysis.” PAR Pharm., Inc. v TWI
Pharm., Inc. 773 F.3d 1186, 1194—95 (Fed Cir. 2014). However,
[t]he mere fact that a certain thing may result from
a given set of circumstances is not sufficient. If,
however, the disclosure is sufficient to show that the
natural result flowing from the operation as taught
would result in the performance of the questioned
function, it seems to be well settled that the
disclosure should be regarded as sufficient.
In re Oelrich, 666 F.2d at 581 (emphasis added) (citations and
quotation marks omitted). Thus, our early precedent, and that of
our predecessor court, established that the concept of inherency
must be limited when applied to obviousness, and is present only
when the limitation at issue is the “natural result” of the
combination of prior art elements. Id.
PAR Pharm., Inc., 773 F.3d at 1195 (quoting In re Oelrich, 666 F.2d 578,
581 (CCPA 1981)) (emphasis added).
Here, similar to our discussion regarding anticipation rejection D, we
find the evidence cited by the Examiner (Final Act. 10) is insufficient to
show that “the natural result flowing from the operation as taught would
result in the performance of the questioned function.” PAR Pharm, 773 F.3d
at 1195 (Fed. Cir. 2014) (internal citation omitted). As the court in Oelrich,
666 F.2d at 581, guides: [t]he mere fact that a certain thing may result from a
given set of circumstances is not sufficient.” Id.
Moreover, the Examiner has not shown that the performance of the
steps or acts in Akimoto’s FRTA process (H 81, 107) necessarily results in,
or necessarily suggests, Appellants’ claimed transistor apparatus.
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Therefore, we find the performance of the steps or acts in Akimoto’s process
(H 81, 107) does not necessarily teach or suggest the transistor apparatus,
or contested structural element thereof (c-axis-oriented crystals), as
claimed by Appellants. (See Independent Claims 1,12, and 22).
Furthermore, as persuasively pointed out by Appellants:
‘“paragraphs [0070]-[0071] of [the] current Application’ are not prior
art. Therefore, there is no teaching or motivation in the prior art to
include crystals having the claimed c-axis orientation. Likewise, the
secondary references have similarly not been shown to necessarily address
each and all claim limitations . . . .” (App. Br. 33) (emphasis added).
We agree with Appellants {id.), and find the Examiner (in assuming
the role of the hypothetical person of ordinary skill in the art) has
impermissibly used Appellants’ Specification (|| 70—71) as a guide. We
additionally note the Examiner fails to further address Appellants’
arguments in the Answer regarding the obviousness rejection under
§§ 102(b)/103(a) Rejection D. Specifically, the Examiner incorrectly
asserts that “the 35 USC 103 rejection was not argued against.” (Ans. 18).
We note independent claims 1,12, (and 22) identically recite
contested limitation L. Therefore, for essentially the same reasons argued by
Appellants (App. Br. 30-33; Reply Br. 20—23), as further discussed above,
we are constrained on this record to reverse §§ 102(b)/103(a) Rejection D of
claims 1—3, 7—13, and 7—21.
Rejection E of Dependent Claims 4, 6, 14, and 16 under § 103(a)
Rejection E also relies on Akimoto, considered as a single § 103(a)
reference. On this record, we find the Examiner has not shown how the
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aforementioned deficiencies of Akimoto regarding Rejection D of
independent claims 1 and 12 (from which claims 4, 6, 14, and 16 depend)
are overcome. Therefore, we are constrained on this record to reverse § 103
rejection E of dependent claims 4, 6, 14, and 16.
Rejection F of Claims 22—25 and 27—32 under § 103(a)
We note independent claims 1,12, and 22 identically recite contested
limitation L. On this record, we find the Examiner has not shown how the
additionally cited Wager and Sugihara references overcome the
aforementioned deficiencies regarding Akimoto (see discussion of Rejection
D of independent claims 1 and 12 over Akimoto, supra). Therefore, we are
constrained on this record to reverse § 103(a) Rejection F of claims 22—25
and 27—32.
Other Issues — Petitionable Issue
Restriction Requirement by the Examiner
Appellants additionally seek review by the Board of the Examiner’s
restriction requirement. (See App. Br. 33: “The Withdrawal of Claims 33-
56 was Improper as Claims 33-56 Read On or are Generic to Elected FIG.
IB”) (emphasis omitted).
However, this is a petitionable matter to the Technology Center
Director under 37 C.F.R. § 1.181, and thus is not within the jurisdiction of
the Board. See MPEP § 1002.02(c)(2) (“Petitions and Requests Decided by
the Technology Center Directors” — “Petitions from a final decision of
examiner requiring restriction in patent applications under 37 CFR 1.144 and
MPEP § 818.01(c). . .”) (emphasis omitted).
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Conclusion
For at least the aforementioned reasons, on this record, and based
upon a preponderance of the evidence, Appellants have persuaded us the
Examiner erred in rejecting all claims on appeal, as rejected by the Examiner
under rejections A—F.
DECISION
We reverse the Examiner’s decision rejecting claims 1—4, 6—14,
16—25, and 27—32 under pre-AIA 35 U.S.C. § 112, first paragraph (written
description).
We reverse the Examiner’s decision rejecting claims 1—4, 6—14,
16—25, and 27—32 under pre-AIA 35 U.S.C. § 112, first paragraph
(enablement).
We reverse the Examiner’s decision rejecting claims 1—4, 6—14,
16— 25, and 27—32 under pre-AIA 35 U.S.C. § 112, second paragraph.
We reverse the Examiner’s decision rejecting claims 1—3, 7—13, and
17- 21 under pre-AIA 35 U.S.C. § 102(b).
We reverse the Examiner’s decision rejecting claims 1—4, 6—14,
16—25, and 27—32 under pre-AIA 35 U.S.C. § 103(a).
REVERSED
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