Board okays Examiner's reliance on drawings alone, despite silence as to scale

Takeaway: The Applicant appealed an obviousness rejection In an application directed to a semiconductor structure. The Examiner relied solely on prior art figures to teach relative dimensions as claimed. The Applicable argued that such reliance was improper as a matter of law because the reference did not mention scale. The Board disagreed, finding "sufficient detail and precision [in the drawings] to allow some findings and conclusions with regard to the relative size of the depicted structures. Moreover, Romano's written description supports those findings and conclusions." (Ex parte Sato , PTAB 2014.)

Details:
Ex parte Sato
Appeal 201201276; Appl. No. 11/686,892; Tech .Center 2800
Decided:  March 20, 2014

The application on appeal was directed to an LED. The limitations at issue involved the relative dimensions of structures within the LED.

During prosecution, the Examiner rejected originally filed claim 9 as obvious over Kwak in view of Applicant Admitted Prior Art (AAPA).

     9. A method of manufacturing a semiconductor light-emitting device, the semiconductor light-emitting device including a semiconductor layer and a first electrode (24) on a first surface (11) of a semiconductor substrate (10) and a second electrode (40) on a second surface (12) of the semiconductor substrate (10), the semiconductor layer including a light-emitting  region (22A), the method comprising the steps  of:          
     after forming the semiconductor layer on the first surface (11), forming the first electrode (24) on the first surface (11) so as to correspond to at least the light-emitting region (22A);  
     arranging a recessed section (12A) with a depth larger than the thickness of the second electrode (40) on the second surface (12) so as to form a step section (12B) projected from the recessed section (12A) in a region other than the recessed section (12A) in the second surface (12);
     forming the second electrode (40) on at least the recessed section (12A) of the second surface;          
(Emphasis added.)

For the "depth" limitation highlighted above, the Examiner relied solely on the figures in Kwak – not on the specification of Kwak. In analyzing Kwak Fig. 17, the Examiner mapped via hole h3 to the claimed recessed section and conductive layer 175 to the claimed projection.

The Applicant argued only the dimensional ("depth") limitation of claim 9. However, the Applicant did not distinguish Kwak, instead merely traversing the Examiner's sole reliance on Kwak's drawing. Citing to a variety of cases from the Federal Circuit and CCPA, the Applicant asserted that reliance on the drawings was improper under case law because the specification of the reference was silent on dimensions (absolute and relative). The Applicant further asserted that the specification "fails to indicate that the drawings are to scale" so that "apparently the proportions shown in FIG. 17 are apparently the result of the draftman's selection rather than the embodiment of an intention to represent the device to scale." 

The Examiner maintained the rejection in another Office Action, and continued to rely solely on the drawings. In response to Applicant arguments, the Examiner pointed to MPEP 2125 ("the description of the article pictured can be relied on, in combination with the drawings, for what they would reasonably teach one of ordinary skill in the art"). The Examiner further explained his reading of Kwak:

... Kwak clearly discloses in figure 17 that the depth of the recessed section h3 is larger than the thickness of the second electrode 175, and the one of ordinary skill in the art would easily recognize this relationship from the figure of Kwak. Furthermore, if the second electrode 175 was thicker than the recess h3, then it would be level with the bottom of, or even protrude from the bottom of, layer 150. However, Kwak clearly shows second electrode 175 to be recessed within the recessed section h3. The Examiner submits that one of ordinary skill in the art would easily recognize that the depth of the recessed section is larger than the thickness of the second electrode 175.

Later in prosecution, Applicant added another claim with relative dimensions. This one involved width rather than depth:

     13. A method of manufacturing a semiconductor light-emitting device, the method comprising the steps of:
     forming a first electrode on a projection section, said projection section being a contact layer on a first conductivity type cladding layer;
     forming a second electrode in a recessed section of a substrate, the width of said recessed section being larger than the width of said projection section.
(Emphasis added.)

The Examiner rejected claim 13 as anticipated by or (in the alternative) obvious over Romano. Once again the rejection relied solely on drawings. In analyzing FIG. 15 of Romano, the Examiner mapped area 516 to the claimed recessed section and layers s574 and 576 to the claimed projection.

The Applicant filed an After Final Response and handled the claim 13 rejection similar to the previous handling of claim 9. Namely, the Applicant argued that case law prohibited the Examiner from relying solely on the figures of the reference. In the Advisory Action, the Examiner responded to the claim 13 argument by once again referring to MPEP 2125 and explaining what inferences a POSIA would draw from the figure alone. The Advisory Action concluded with this statement

[O]ne of ordinary skill in the art would easily recognize this [relative width]structural limitation . Hence, it would have been obvious to one of ordinary skill in the art at the time the invention was made to make the width of the recessed section larger than the width of the projection section since Romano clearly suggests this structure in figure 15. (Emphasis added.)

The Applicant appealed the pending claims. Once again, the only argument made for independent claims 9 and 13 was improper reliance on the drawings. For claim 9, the Applicant merely repeated the arguments made in the Response to Final. For claim 13, the Applicant repeated previous arguments but added additional arguments.

One of the arguments newly added for claim 13 addressed two cases cited in MPEP 2125. The Applicant first distinguished In re Aslanian, arguing that Aslanian dealt with a design patent rather than utility patent. The Applicant then addressed In re Mraz by quoting sections in which the appellate court had approved of use of a drawing showing the features at issue "with great particularity," while contrasting this with an "enlarged section of a small drawing obviously never intended to show the dimensions of anything." The Applicant asserted that Romano, like the disapproved drawing in Mraz, "fails to proffer an intent that the width of cavity (416)(516) is larger than the width of layers (474,476)(574,576)."


In contesting the rejection of claim 13, the Applicant also used a teaching of the width limitation in Applicant's own specification to argue that the Examiner had used hindsight:
In the absence of any disclosure within Romano [of the width limitation] or any other objective supporting evidence, the line of reasoning within the Office Action appears to have been merely an extraction from the Appellant's own specification.


The Examiner's Answer basically repeated the earlier rejection of claim 9, but did add an annotated version of Kwak's Fig. 17. The Answer varied the rejection of claim 13 by also relying on an annotated Fig. 14 of Romano.

The Answer also explicitly stated (first the first time) a rationale for the obviousness rejection of claim 13: "in order to maximize the heat dissipation from device, as discussed in Romano [citation to section omitted]." The Examiner also responded to the Appeal Brief arguments of hindsight by asserting (again) that "one of ordinary skill in the art would easily recognize" in Romano's drawing, the width relationship recited in claim 13.

After receiving the Examiner's Answer, the Applicant filed an Amendment cancelling independent claim 9. Independent claim 13, added during prosecution, remained on appeal as obvious over Romano.

The Board framed the issue as "... whether Romano 'describes' [under § 102] or suggests [under § 103,] the claimed relative widths." The Board affirmed and explained as follows:

     [W]e look to the drawings, but consider them in light of the disclosure as a whole to determine what Romano would have disclosed and suggested to one of ordinary skill in the  art. ... The Examiner here is not attempting to use the drawings of Romano to establish precise dimensions, but is citing the drawings for showing generalized proportions. While we agree with Appellants that the drawings are not disclosed by Romano as being to scale, the drawings are drawn with a sufficient detail and precision to allow some findings and conclusions with regard to the relative size of the depicted structures. Moreover, Romano's written  description supports those findings and conclusions. ....In explaining Figure 9, Romano states that the cavity 216 has a length and width larger than that of the p-contacts 240 situated above it. (Internal citations omitted) .... 

... Romano's Figures 10-14 show the progressive steps of forming a semiconductor device with a filled cavity 416. All of the figures depict the various layers and structures within the device with different thicknesses. It is, therefore, reasonable to believe that Romano intended to convey relative differences in thickness even if not exactly to scale. Figures  11-14, like  Figure 9, include multiple p-contacts (440) over cavity 416. Therefore, it is reasonable to believe that, like the p-contacts of Figure 9, the p-contacts 440 of Figures 10-14 are intended to be of smaller width than the width of the cavity 416.

My two cents: Weak Applicant argument. It was clear from the prosecution history that the Examiner did not rely on dimensions, measurements, or values, which means In re Wilson and In re Wright were inapposite. Similarly, the Examiner relied on general rather than precise proportions, so In re Olson and Hockerson-Halberstadt v. Avia were inapposite.

Still, this decision is a good review of the case law governing drawings as prior art.