Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: support for claims 4 and 22 is not found.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—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, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 4 and 22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Recitation of
wherein the length of the second area is 10_micrometers to 20 micrometers and wherein a width of the semiconductor layer is 60 micrometers to 100 micrometers is not supported. Applicant only has support for wherein the length of the second area is 2 micrometers or more.
With respect to changing numerical range limitations, the analysis must take into account which ranges one skilled in the art would consider inherently supported by the discussion in the original disclosure. In the decision in In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), the ranges described in the original specification included a range of “25%- 60%” and specific examples of “36%” and “50%.” A corresponding new claim limitation to “at least 35%” did not meet the description requirement because the phrase “at least” had no upper limit and caused the claim to read literally on embodiments outside the “25% to 60%” range, however a limitation to “between 35% and 60%” did meet the description requirement.
Simply stating for wherein the length of the second area is 2 micrometers or more does not give support for everything greater than 2 microns. It would not give applicant support for 1 km widths.
In this case applicant provides no examples or other range discussions thus support for more specific ranges based on the examiner’s rejection is improper.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4 and 21-23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to how the device function specifically:
and wherein a sensitivity of the photodiode decreases in an order of a blue light, a green light, and a red light under a same condition.
wherein a uniform current density is maintained at a voltage of 0 V or less
wherein a current density is higher when a near infrared (NIR) LED is irradiated than when a blue LED is irradiated under same conditions.
Applicant gives no corresponding structure that tells how the device functions in the manner see mpep 2173.05g:
A claim term is functional when it recites a feature "by what it does rather than by what it is" (e.g., as evidenced by its specific structure or specific ingredients). In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 229 (CCPA 1971). There is nothing inherently wrong with defining some part of an invention in functional terms. Functional language does not, in and of itself, render a claim improper. Id. In fact, 35 U.S.C. 112(f) and pre-AIA 35 U.S.C. 112, sixth paragraph, expressly authorize a form of functional claiming (means- (or step-) plus- function claim limitations discussed in MPEP § 2181 et seq.). Functional language may also be employed to limit the claims without using the means-plus-function format. See, e.g., K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363, 52 USPQ2d 1001, 1005 (Fed. Cir. 1999). Unlike means-plus-function claim language that applies only to purely functional limitations, Phillips v. AWH Corp., 415 F.3d 1303, 1311, 75 USPQ2d 1321, 1324 (Fed. Cir. 2005) (en banc) ("Means-plus-function claiming applies only to purely functional limitations that do not provide the structure that performs the recited function."), functional claiming often involves the recitation of some structure followed by its function. For example, in In re Schreiber, the claims were directed to a conical spout (the structure) that "allow[ed] several kernels of popped popcorn to pass through at the same time" (the function). In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). As noted by the court in Schreiber, "[a] patent applicant is free to recite features of an apparatus either structurally or functionally." Id.
A functional limitation must be evaluated and considered, just like any other limitation of the claim, for what it fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is used. A functional limitation is often used in association with an element, ingredient, or step of a process to define a particular capability or purpose that is served by the recited element, ingredient or step. In Innova/Pure Water Inc. v. Safari Water Filtration Sys. Inc., 381 F.3d 1111, 1117-20, 72 USPQ2d 1001, 1006-08 (Fed. Cir. 2004), the court noted that the claim term "operatively connected" is "a general descriptive claim term frequently used in patent drafting to reflect a functional relationship between claimed components," that is, the term "means the claimed components must be connected in a way to perform a designated function." "In the absence of modifiers, general descriptive terms are typically construed as having their full meaning." Id. at 1118, 72 USPQ2d at 1006. In the patent claim at issue, "subject to any clear and unmistakable disavowal of claim scope, the term ‘operatively connected’ takes the full breath of its ordinary meaning, i.e., ‘said tube [is] operatively connected to said cap’ when the tube and cap are arranged in a manner capable of performing the function of filtering." Id. at 1120, 72 USPQ2d at 1008.
Other examples of permissible function language include the following.
It was held that the limitation used to define a radical on a chemical compound as "incapable of forming a dye with said oxidizing developing agent" although functional, was perfectly acceptable because it set definite boundaries on the patent protection sought. In re Barr, 444 F.2d 588, 170 USPQ 330 (CCPA 1971).
In a claim that was directed to a kit of component parts capable of being assembled, the court held that limitations such as "members adapted to be positioned" and "portions... being resiliently dilatable whereby said housing may be slidably positioned" serve to precisely define present structural attributes of interrelated component parts of the claimed assembly. In re Venezia, 530 F.2d 956, 189 USPQ 149 (CCPA 1976).
Notwithstanding the permissible instances, the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008) (noting that the Supreme Court explained that a vice of functional claiming occurs "when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty") (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938)); see also United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 234, 55 USPQ 381 (1942) (holding indefinite claims that recited substantially pure carbon black "in the form of commercially uniform, comparatively small, rounded smooth aggregates having a spongy or porous exterior"). Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim. Ariad Pharmaceuticals., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353, 94 USPQ2d 1161, 1173 (Fed. Cir. 2010) (en banc). See also Datamize LLC v. Plumtree Software Inc., 417 F.3d 1342, 75 USPQ2d 1801 (Fed. Cir. 2005) where a claim directed to a software based system for creating a customized computer interface screen recited that the screen be "aesthetically pleasing," which is an intended result and does not provide a clear cut indication of scope because it imposed no structural limits on the screen. Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed. Cir. 1983); Ariad, 598 F.3d at 1340, 94 USPQ2d at 1167. For instance, a single means claim covering every conceivable means for achieving the stated result was held to be invalid under 35 U.S.C. 112, first paragraph because the court recognized that the specification, which disclosed only those means known to the inventor, was not commensurate in scope with the claim. Hyatt, 708 F.2d at 714-715, 218 USPQ at 197. For more information regarding the written description requirement and enablement requirement under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, see MPEP §§ 2161-2164.08(c). Examiners should keep in mind that whether or not the functional limitation complies with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is a different issue from whether the limitation is properly supported under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or is distinguished over the prior art.
When a claim limitation employs functional language, the examiner’s determination of whether the limitation is sufficiently definite will be highly dependent on context (e.g., the disclosure in the specification and the knowledge of a person of ordinary skill in the art). Halliburton Energy Servs., 514 F.3d at 1255, 85 USPQ2d at 1663. For example, a claim that included the term "fragile gel" was found to be indefinite because the definition of the term in the specification was functional, i.e., the fluid is defined by what it does rather than what it is ("ability of the fluid to transition quickly from gel to liquid, and the ability of the fluid to suspend drill cuttings at rest"), and it was ambiguous as to the requisite degree of the fragileness of the gel, the ability of the gel to suspend drill cuttings (i.e., gel strength), and/or some combination of the two. Halliburton Energy Servs., 514 F.3d at 1255-56, 85 USPQ2d at 1663. In another example, the claims directed to a tungsten filament for electric incandescent lamps were held invalid for including a limitation that recited "comparatively large grains of such size and contour as to prevent substantial sagging or offsetting during a normal or commercially useful life for such a lamp or other device." General Elec. Co., 304 U.S. at 370-71, 375. The Court observed that the prior art filaments also "consisted of comparatively large crystals" but they were "subject to offsetting" or shifting, and the Court further found that the phrase "of such size and contour as to prevent substantial sagging and offsetting during a normal or commercially useful life for a lamp or other device" did not adequately define the structural characteristics of the grains (e.g., the size and contour) to distinguish the claimed invention from the prior art. Id. at 370. Similarly, a claim was held invalid because it recited "sustantially (sic) pure carbon black in the form of commercially uniform, comparatively small, rounded smooth aggregates having a spongy or porous exterior." United Carbon Co., 317 U.S. at 234. In the latter example, the Court observed various problems with the limitation: "commercially uniform" meant only the degree of uniformity buyers desired; "comparatively small" did not add anything because no standard for comparison was given; and "spongy" and "porous" are synonyms that the Court found unhelpful in distinguishing the claimed invention from the prior art. Id. at 233.
In comparison, a claim limitation reciting "transparent to infrared rays" was held to be definite because the specification showed that a substantial amount of infrared radiation was always transmitted even though the degree of transparency varied depending on certain factors. Swinehart, 439 F.2d at 214, 169 USPQ at 230. Likewise, the claims in another case were held definite because applicant provided "a general guideline and examples sufficient to enable a person of ordinary skill in the art to determine whether a process uses a silicon dioxide source ‘essentially free of alkali metal’ to make a reaction mixture ‘essentially free of alkali metal’ to produce a zeolitic compound ‘essentially free of alkali metal.’" In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 293 (Fed. Cir. 1983).
Examiners should consider the following factors when examining claims that contain functional language to determine whether the language is ambiguous: (1) whether there is a clear cut indication of the scope of the subject matter covered by the claim; (2) whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained; and (3) whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim. These factors are examples of points to be considered when determining whether language is ambiguous and are not intended to be all inclusive or limiting. Other factors may be more relevant for particular arts. The primary inquiry is whether the language leaves room for ambiguity or whether the boundaries are clear and precise.
During prosecution, applicant may resolve the ambiguities of a functional limitation in a number of ways. For example: (1) "the ambiguity might be resolved by using a quantitative metric (e.g., numeric limitation as to a physical property) rather than a qualitative functional feature" (see Halliburton Energy Servs., 514 F.3d at 1255-56, 85 USPQ2d at 1663); (2) applicant could demonstrate that the "specification provide[s] a formula for calculating a property along with examples that meet the claim limitation and examples that do not" (see id. at 1256, 85 USPQ2d at 1663 (citing Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1341, 65 USPQ2d 1321, 1326 (Fed. Cir. 2003))); (3) applicant could demonstrate that the specification provides a general guideline and examples sufficient to teach a person skilled in the art when the claim limitation was satisfied (see Marosi, 710 F.2d at 803, 218 USPQ at 292); or (4) applicant could amend the claims to recite the particular structure that accomplishes the function.
As a result, it is unclear what structure performs the actions required thus it is unclear the scope of the claim.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-4, and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Isobe (20110049588) in view of Jin (Lateral Grain Growth of Amorphous Silicon Films With Wide Thickness Range by Blue Laser Annealing and Application to High Performance Poly-Si TFTs) in further view of Itoh ‘480 previously cited
As to claims 1 and 2, Isobe teaches A photodiode comprising: a semiconductor layer including a first area (figure 1b or 7b 158), a second area (item 164), and a third area (item 162);a first electrode electrically connected to the first area (corresponding item 17); and a second electrode electrically connected to the third area (item 174), wherein the first area includes a p-type semiconductor area (item 158), the third area includes an n-type semiconductor area (item 162). Isobe further indicates cost consideration are important in defining the thickness paragraph 274). Isobe teaches polysilicon paragraph 66:
Note that in this embodiment, the case of using a single crystal silicon substrate for an integrated circuit as a bonding substrate is described; however, an embodiment of the invention disclosed is not construed as being limited to this structure. For example, a solar-grade single crystal silicon substrate may be used. Alternatively, a polycrystalline semiconductor substrate including a polycrystalline silicon substrate can be used. Note that, in considering characteristics of the photoelectric conversion element to be formed, it is preferable that a single crystal semiconductor substrate be used.
Isobe wherein the semiconductor layer comprises polysilicon,
Isobe teaches thickness of approximately 10 nm to 1000 nm paragraph 75).
Isobe does not explicitly teach and the thickness of the semiconductor layer is 200 to 500 nm.
However, applicant has shown no unexpected results for the thickness.
Thus, it would have been obvious to one of ordinary skill in the art at the time filing to optimize the thickness to be 200 to 500 nm to optimize the total absorption while minimizing the cost since the thicker layer would allow for a greater chance that light is absorbed in the thickness. However too thick makes the device too bulky. Moreover, one would be using conventional thicknesses to obtain expected results of a function a functional photodetector.
Isobe teaches wherein the photodiode is configured to detect at least one of ultraviolet rays, visible rays, and near infrared (NIR) rays it is a photodetector for light an implies visible light paragraph 138. Further this is merely reciting the intended usage not a physical structure. The structure is otherwise the same thus reading on the claim.
With respect to the limitation of and wherein a sensitivity of the photodiode decreases in an order of a blue light, a green light, and a red light under a same condition.
It appears that since Isobe is polysilicon the same material as Applicant it must have the same properties. As such the function would be inherent.
Conversely if there is some structural difference the only difference perhaps the method it is formed. Applicant discuses using Blue Laser Anneal to form the polysilicon. Which assuming arguendo lead to a functional difference, Isobe does not teach.
Jin teaches Introduction:
POLYCRYSTALLINE silicon (poly-Si) thin-film transistors
(TFTs) have been widely used as pixel switching
and driving TFTs for manufacturing display devices [1].
To crystallize amorphous silicon (a-Si) films, various crystallization
methods have been suggested, including solid
phase crystallization (SPC) [2], metal induced crystallization
(MIC) [3], [4], excimer laser annealing (ELA) [5]–[7], and
continuous-wave (CW) laser crystallization [8]–[10]. Among
these technologies, SPC has demerits of high defect density
inside and long process time, and poly-Si films using MIC
suffer from metal contamination. Although the ELA process
can solve some of these issues, it is expensive to establish and
to maintain an ELA system. Furthermore, ELA is limited to a
film thickness around 50 nm, due to its short absorption
depth [11], [12]. Although high power can be used to crystallize thick a-Si films, the high crystallization energy consequently, results in poor electrical properties in thick poly-Si TFTs by ELA [13]. Compared to ELA, CWgreen laser crystallization is able to reduce the production cost and achieve larger polycrystalline grains and higher mobility, but needs
high power and thick a-Si films because of its low optical
absorption coefficient in a-Si. In this work, CW blue laser diode annealing (BLA) is used to achieve high performance and low cost low temperature
polycrystalline silicon (LTPS) TFTs. Previous reports have
shown the possibility of crystal growth in a-Si films by
BLA [14], [15]. Here, high performance P-channel LTPS
TFTs with varying poly-Si film thicknesses and annealed by a
445 nm laser diode are presented. The ability of the CW blue
laser to crystalize a-Si films with thicknesses ranging from
50 to 200 nm is also investigated. Crystallization growth
mechanisms by BLA are analyzed and discussed by means of
high resolution scanning electron microscope (SEM) images
and Raman spectra.
Itoh teaches integrating such detectors with thin film transistor(tft) (abstract figure 2 item 10 tft integrated with 20).
Thus, it would have been obvious to one of ordinary skill in the art at the time art to form the polysilicon suggested by Isobe paragraph 66 use blue laser anneal to provide for lower cost, high mobility and high performance as suggest by Jin. Further it would have been obvious to use the same crystallization techniques used for tft enabling one process to be used to crystalize the tft and the detectors at a low cost as would be suggest by Itoh and Jin.
As to claim 3, Isobe teaches the device is on a main surface of a substrate (item 100) and the main surface of defines a laminate direction ( stacking direction of items 164 and 112) on which the semiconductor layer is formed a horizontal direction orthogonal to the laminate direction and the first area, the second area, and the third area are disposed in the horizontal direction (see figures.
As to claim 4, Isobe teaches the width of region 164 is 3 to 10 microns paragraph 255. Isobe does not teach 10 to 20 microns or 60 to 100 microns.
Applicant has shown no unexpected results for the width compared to 2 microns. Increasing the width merely increase the area light can be detected.
Thus, it would have been obvious to one of ordinary skill in the art to provide the length of the second area to be 10 to 20 microns or a width of the semiconductor layer is 60 micrometers to 100 micrometers to provide a larger area to enable detecting more light allowing for a large-scale detector.
As to claim 21, recitation of wherein a uniform current density is maintained at a voltage of 0 V or less would be inherent since it is the same material or same material and same process to form the device.
As to claim 23, recitation wherein a current density is higher when a near infrared (NIR) LED is irradiated than when a blue LED is irradiated under same conditions would be inherent since it is the same material or same material and same process to form the device.
Response to Arguments
Applicant's arguments filed 1/21/2026 have been fully considered but they are not persuasive.
With respect to the 103, Applicant asserts:
However, Isobe's entire disclosure is rooted in the use of a single-crystal semiconductor layer, specifically through an SOI (Silicon-On-Insulator) structure and a complex transfer process (e.g., paragraph [0023], [0084]).
This is not found convincing . Isobe teaches polysilicon paragraph 66:
Note that in this embodiment, the case of using a single crystal silicon substrate for an integrated circuit as a bonding substrate is described; however, an embodiment of the invention disclosed is not construed as being limited to this structure. For example, a solar-grade single crystal silicon substrate may be used. Alternatively, a polycrystalline semiconductor substrate including a polycrystalline silicon substrate can be used. Note that, in considering characteristics of the photoelectric conversion element to be formed, it is preferable that a single crystal semiconductor substrate be used.
A reference cannot teach away from something it teaches. Isobe teaches the use of polysilicon (paragraph 66); thus, it cannot teach away from using polysilicon. It lists disadvantages of polysilicon compared to single crystal silicon but Isobe states:
Note that in this embodiment, the case of using a single crystal silicon substrate for an integrated circuit as a bonding substrate is described; however, an embodiment of the invention disclosed is not construed as being limited to this structure. For example, a solar-grade single crystal silicon substrate may be used. Alternatively, a polycrystalline semiconductor substrate including a polycrystalline silicon substrate can be used. Note that, in considering characteristics of the photoelectric conversion element to be formed, it is preferable that a single crystal semiconductor substrate be used.
This anticipates polycrystalline silicon. Teaches away can only be asserted for portion not taught by Isobe.
With respect NIR detection Applicant claims are not drawn to NIR exclusively thus it is not commensurate. Detection of NIR is an intended use of the device and does not structural limit the device. We define a device by it structure not by what the device does. Further even if they were applicant has shown unexpected result. Isobe uses it for at least visible light and applicant has shown no unexpected results at any wavelength especially visible or UV. There may be benefit using the device in a NIR detection but that does not make the device novel or inventive. At best it would make the use of the such a device for NIR detection non-obvious not the device itself. It is also pointed unexpected results have to be shown MPEP 716.02a.
With respect to Simplified Manufacturing and Reduced Cost are not evidence of non-obviousness. Isobe already teaches the polysilicon device and the range of thicknesses of 10nm to 1000nm applicant has not shown any unexpected results for the thicknesses of 50nm to 800nm. Further applicant does not claim a process and even if applicant did, how one makes a device is treated as product by process and does not limit the structure. Thus, the claim is still deemed obvious over Isobe.
With respect to the thickness such thickness is known for crystalline material (single or poly). The office does not find it anticipates the range for the material. Applicant pointing to paragraph 264 is irrelevant since the large range is still suggested. Further Isobe does not teach away from polysilicon. A device using polysilicon would have some thickness. Isobe criticism is meaningless since Isobe anticipates the use of polysilicon.
As to criticality Applicant has shown no criticality for the range this is merely a pleading.
MPEP 2144.05 III states:
Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. “The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See also Minerals Separation, Ltd. v. Hyde, 242 U.S. 261, 271 (1916) (a patent based on a change in the proportions of a prior product or process (changing from 4-10% oil to 1% oil) must be confined to the proportions that were shown to be critical (1%)); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205 (CCPA 1946) (“Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”); In re Becket, 88 F.2d 684 (CCPA 1937) (“Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys.”); In re Lilienfeld, 67 F.2d 920, 924 (CCPA 1933) (“It is well established that, while a change in the proportions of a combination shown to be old, such as is here involved, may be inventive, such changes must be critical as compared with the proportions used in the prior processes, producing a difference in kind rather than degree.”); In re Wells, 56 F.2d 674, 675, 12 USPQ 430 (CCPA 1932) (“Changes in proportions of agents used in combinations . . . in order to be patentable, must be critical as compared with the proportions of the prior processes.”); E.I. DuPont de Nemours & Company v. Synvina C.V., 904 F.3d 996, 1006, 128 USPQ2d 1193, 1201 (Fed. Cir. 2018.)(“[A] modification of a process parameter may be patentable if it ‘produce[s] a new and unexpected result which is different in kind and not merely in degree from the results of the prior art.” (citing Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); UCB, Inc. v. Actavis Labs, UT, Inc., 65 F.4th 679, 693, 2023 USPQ2d 448 (Fed. Cir. 2023) (“A difference of degree is not as persuasive as a difference in kind – i.e., if the range produces ‘a new property dissimilar to the known property,’ rather than producing a predictable result but to an unexpected extent.”).
As to the optimization of these factors that would be one with in routine skill in the art applicant asserts criticality in the specification and shows no evidence criticality for range. Thus, it would have to be within routine skill in the art to optimize asserted parameters is such parameters are indeed a factor.
With respect to the sensitivity applicant point to no structure that provide for the function claim limitation of 1 21 and 23.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW L REAMES whose telephone number is (571)272-2408. The examiner can normally be reached M-Th 6:00 am-4:00 pm EST.
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/MATTHEW L. REAMES/
Primary Examiner
Art Unit 2896
/MATTHEW L REAMES/ Primary Examiner, Art Unit 2896
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