Ex Parte Liu et al - Page 3



          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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