Ex Parte Kakehata et al

Patent Trial and Appeal BoardMay 19, 2014

11826229 (P.T.A.B. May. 19, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/826,229 07/13/2007 Tetsuya Kakehata 0756-8077 1853 31780 7590 05/20/2014 Robinson Intellectual Property Law Office, P.C. 3975 Fair Ridge Drive Suite 20 North Fairfax, VA 22033 EXAMINER LAURENZI, MARK A ART UNIT PAPER NUMBER 2894 MAIL DATE DELIVERY MODE 05/20/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TETSUYA KAKEHATA and TOMOKAZU YOKOI Appeal 2012-000470 Application 11/826,229 Technology Center 2800 ____________ Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-000470 Application 11/826,229 2 STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 2, 5, 7-14, 17 and 19-36. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). An oral hearing was held on May 15, 2014. We reverse. CLAIMED SUBJECT MATTER The claimed invention is directed to a method of manufacturing a semi-conductor device. Claim 1 is representative of the claims on appeal and is reproduced below from the Claims Appendix of the Appeal Brief (emphasis added): 1. A method of manufacturing a semiconductor device comprising the steps of: forming a semiconductor layer over a substrate; and subjecting the semiconductor layer to a plasma treatment by supplying a first gas containing a rare gas, an oxygen gas, and a hydrogen gas, and supplying a second gas consisting of a rare gas and an oxygen gas, wherein the supply of the second gas is performed after the supply of the first gas, and whereby an insulating layer is formed on a surface of the semiconductor layer, and wherein a silicon oxide layer is formed as the insulating layer. 1 The real party-in-interest is Semiconductor Energy Laboratory Co., Ltd. (Br. 3). Appeal 2012-000470 Application 11/826,229 3 REJECTIONS ON APPEAL (1) Claims 1, 2, 5, 13-14, 17 and 25-36 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tonda2 in view of Lee,3 Shinada,4 and Niimi.5 (2) Claims 7-9 and 19-21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tonda in view of Lee, Shinada, and Niimi, and further in view of Matsuda.6 (3) Claims 10-12 and 22-24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tonda in view of Lee, Shinada, and Niimi, and further in view of Yamazaki.7 Each of the appealed claims recites the use of a first gas containing “a hydrogen gas” and the formation of “a silicon oxide layer” (e.g., claim 1, third paragraph and fifth paragraph). In order to make out a prima facie case of obviousness, the Examiner relies on Niimi to teach the use of “a hydrogen gas,” stating that Niimi’s disclosure of the use of ammonia gas (NH3) corresponds to the claimed use of “a hydrogen gas” (see, e.g., Ans. 7). It is well established that “the PTO must give claims their broadest reasonable construction consistent with the specification . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc., 2 Tonda, US 2006/0133171 A1, published June 22, 2006. 3 Lee, et al., US 2004/0135193 A1, published July 15, 2004. 4 Shinada, et al. US 2005/0136597 A1, published June 23, 2005. 5 Niimi, US 2004/0070046 A1, published April 15, 2004. 6 Matsuda, et al. US 2005/0202183 A1, published September 15, 2005. 7 Yamazaki, et al., US 2002/0048864 A1, published April 25, 2002. Appeal 2012-000470 Application 11/826,229 4 496 F.3d 1374, 1379 (Fed. Cir. 2007) (emphasis added). “[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” Id. In this instance, the Examiner correctly states that “claims must be interpreted as broadly as their terms reasonably allow” (Ans. 11, emphasis added). According to the Examiner, the broadest reasonable interpretation of the phrase “a hydrogen gas” is “any gas which has hydrogen in it” (id.). Appellants dispute the Examiner’s claim construction, arguing that the phrase “a hydrogen gas” cannot reasonably be construed to cover the NH3 gas of Niimi (Br. 11-14; Reply Br. 3-6). We determine that the Examiner has erred in giving the phrase “a hydrogen gas” such a broad interpretation, and conclude that the error requires reversal of the rejections. The only evidence cited by the Examiner in support of the proposed broad definition of “a hydrogen gas” – namely “a gas with hydrogen” – is the fact that Appellants’ Specification does not specifically define “a hydrogen gas” with “reasonable clarity, deliberateness, and precision so as to set out [the] uncommon definition in some manner within the patent disclosure” (Ans. 12). It is well established that, to the extent possible, claim terms are given their ordinary and customary meaning, as they would be understood by one of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). Idiosyncratic language, highly technical terms, or terms coined by the inventor are best understood by reference to the specification. Id. at 1315- 16. Applicants are free to act as their own lexicographers, but any novel definitions they choose to adopt must be clearly indicated as such. Vitronics Appeal 2012-000470 Application 11/826,229 5 Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“[A] patentee may choose to be his own lexicographer . . . as long as the special definition of the term is clearly stated in the patent specification…”). In this instance, the Specification does not explicitly define “a hydrogen gas.” Therefore, the phrase is properly construed to have its ordinary and customary meaning as would be understood by one of ordinary skill in the art. Phillips, 415 F.3d at 1312-13. As noted by Appellants, the term “hydrogen gas”8 is well understood in the art to correspond to a gas with the chemical formula H2 (Br. 12, citing "Dehydrogenate," O=Chem. Directory, University of Southern Maine which discloses that: "Chemists have known for over a century that the formula for hydrogen gas is H2.") That ordinary meaning is consistent with Appellants’ usage of the term in the written description. See, e.g., Spec. ¶¶ 0037-0038. The Examiner has not supplied persuasive evidence to support the very broad definition of “hydrogen gas” required to make out the prima facie case of obviousness, a definition which would include many different gases, including water vapor (H2O),9 methane (CH4), and hydrogen fluoride (HF). Without such evidence, we cannot conclude that the Examiner’s proposed definition of “hydrogen gas” is the broadest reasonable interpretation of the term. ICON, 496 F.3d at 1379. 8 Claim 1 recites “a hydrogen gas,” not “hydrogen gas,” presumably to provide the phrase with antecedent basis (see, e.g. claim 28, reciting first “a hydrogen gas” and subsequently “the hydrogen gas”). 9 The Specification states that water may be considered a “hydrogen supply source” (e.g. Spec. 0050), but this is not a statement that water is “a hydrogen gas.” Appeal 2012-000470 Application 11/826,229 6 In addition, as noted above, each of the appealed claims also recites the formation of a “silicon oxide layer” (e.g., claim 1, fifth paragraph). In order to make out a prima facie case of obviousness, the Examiner relies on Niimi to teach the formation of a silicon oxide layer, stating that Niimi’s disclosure of the formation of a silicon oxynitride layer (¶ 0011) corresponds to the claimed formation of a ”silicon oxide layer” (see, e.g., Ans. 7). We agree with Appellants that the Specification clearly distinguishes between a silicon oxide, having a chemical formula SiOx, and a silicon oxynitride, having a chemical formula SiOxNy (e.g. Spec. 0065, 0068). The Examiner’s argument in support of his proposed definition of “silicon oxide layer”10 is that “Appellant has failed to narrowly define ‘a silicon oxide layer’ with reasonable clarity, deliberateness, and precision to as to set out his uncommon definition…” (Ans. 13). However, the Specification identifies “silicon oxide” as having the chemical formula SiOx, and distinguishes it from “silicon oxynitride” (e.g., Spec. 0065). Therefore, the Examiner’s argument that Appellants have failed to define “a silicon oxide” is not persuasive. This means that the Examiner’s proposed definition of “silicon oxide” is not the broadest reasonable definition of the term. ICON, 496 F.3d at 1379. To reject a claim in a patent application as obvious under 35 U.S.C. § 103(a), the examiner must show a prima facie case of obviousness. “In the absence of a proper prima facie case of obviousness, an applicant who complies with the other statutory requirements is entitled to a patent.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In this 10 The proposed definition of “silicon oxide layer” is “a layer with silicon and oxygen” (Ans. 13). Appeal 2012-000470 Application 11/826,229 7 instance, the Examiner has not shown that the prior art teaches or suggests the use of hydrogen gas in a plasma treatment of a semiconductor layer, or the formation of a silicon oxide layer resulting from such treatment, requiring the reversal of each of the rejections. CONCLUSION We REVERSE the rejection of claims 1, 2, 5, 13-14, 17 and 25-36 under 35 U.S.C. § 103(a) as being unpatentable over Tonda in view of Lee, Shinada, and Niimi. We REVERSE the rejection of claims 7-9 and 19-21 under 35 U.S.C. § 103(a) as being unpatentable over Tonda in view of Lee, Shinada, and Niimi, and further in view of Matsuda. We REVERSE the rejection of claims 10-12 and 22-24 under 35 U.S.C. § 103(a) as being unpatentable over Tonda in view of Lee, Shinada, and Niimi, and further in view of Yamazaki. REVERSED kmm