Appeal No. 2003-1495
Application No. 09/591,968
of claims 31 through 36 and 38.
According to the examiner (answer, page 6):
The Appellants correctly state that the dose specifies
how many atoms are implanted during the time of
implantation. However, the result of such an implant
is that part of the device that is a physical
manifestation of the process of implantation. The dose
is only associated with the beam and therefore is a
“product-by-process” limitation,[.] The final product
per se which [sic] must be determined in a “product by
process” claim, and not the patentability of the
process. An old or obvious product produced by a new
method is not patentable as a product, whether claimed
in “product by process” claims or not.
Appellants argue (brief, page 7) that the claimed dose
“specifies how many ions are implanted per unit area,” and is,
therefore, “a characteristic of the implanted solid.” Appellants
additionally argue (brief, page 7) that Chang neither teaches nor
would have suggested the claimed dose of the implanted region.
We agree with appellants’ arguments. In keeping with In re
Garnero, 412 F.2d 276, 278-279, 162 USPQ 221, 223 (CCPA 1969),
the claimed dose is a structural amount of an implanted species
in the noted region as opposed to a process step of implanting a
species in the region. Thus, the rejections are reversed because
“the single reference cannot teach the claimed invention under
Section 102 or Section 103” (brief, page 7).
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