Ex Parte Oshiyama et al

Patent Trial and Appeal Board

Oct 5, 2017

12544914 (P.T.A.B. Oct. 5, 2017)

United States Patent and Trademark Office
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.
12/544,914 08/20/2009 Itaru Oshiyama 880001-4659-US00 1286
134795 7590 10/10/2017
MICHAEL BEST & FRIEDRICH LLP (DC)
100 E WISCONSIN AVENUE
Suite 3300
MILWAUKEE, WI 53202
EXAMINER
SEGURA, CYNTHIA
ART UNIT PAPER NUMBER
2662
NOTIFICATION DATE DELIVERY MODE
10/10/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ITARU O SHI YAM A, YUKI MIYANAMI, SUSUMU HI YAM A,
and KAZUKI TANAKA
Appeal 2016-002605
Application 12/544,9141
Technology Center 2600
Before JEAN R. HOMERE, HUNG H. BUI, and NABEEL U. KHAN,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 44, 45, 48—61, 63, and 65—69, which
are all the claims pending in the application. Claims 1—43, 46-47, 62, and
64 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
1 According to Appellants, the real party in interest is Sony Corporation.
App. Br. 2.
2 Our Decision refers to Appellants’ Appeal Brief filed July 17, 2015 (“App.
Br.”); Reply Brief, filed January 04, 2016 (“Reply Br.”); Examiner’s
Answer mailed November 5, 2015 (“Ans.”); Final Office Action mailed
September 11, 2014 (“Final Act.”); and original Specification filed August
20, 2009 (“Spec.”).
Appeal 2016-002605
Application 12/544,914
STATEMENT OF THE CASE
A conventional solid-state imaging device such as a CCD (charged-
coupled device) or CMOS (complementary metal-oxide semiconductor)
image sensor is typically provided with a hole accumulated diode (HAD)
structure to suppress dark current (i.e., electrons formed at an interface
between an insulating film (i.e., light receiving surface) and the sensor).
Spec. 1:12—2:2. According to Appellants, “it is difficult to form the hole
accumulation layer [of the HAD structure]” exhibiting “a small thickness” at
a low temperature. Id. at 3:2—22.
Appellants’ invention seeks to reduce “dark current. . . without
providing a hole accumulation layer” by providing “a sensor including an
impurity diffusion layer [] formed in a surface layer of a semiconductor
substrate, and an oxide insulating film containing carbon [] then deposited
on the sensor.” Id. at 4:16—20. According to Appellants, “this oxide
insulating film ... is composed of a metal oxide or a silicon-based material.”
Id. at 4:10—13. “[T]he carbon concentration in the oxide insulating film is
controlled by changing a flow rate ratio of a material gas containing carbon
and the deposition temperature.” Id. at 4:20—23. “[T]he carbon
concentration is controlled on the side that contacts the semiconductor
substrate.” Id. at 11:2—9.
Appellants’ Figure IB shows the formation of an oxide insulation
film, as reproduced below with additional markings for illustration.
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Application 12/544,914
Appellants’ Figure IB shows an oxide insulating film (i.e., oxide of a metal)
9 A including carbon formed on a surface of substrate 101.
Claims 44 and 58 are independent. Representative claim 44 is
reproduced below with disputed limitations in italics:
44. A solid-state imaging device comprising:
an oxide of a metal, said oxide of the metal being on a
surface of a semiconductor substrate;
an accumulation layer of a first conductivity-type within
said semiconductor substrate, said first conductivity-type being
opposite to a second conductivity-type;
a well layer of the second conductivity-type within said
semiconductor substrate, said accumulation layer touching said
well layer and said oxide of the metal,
wherein [1] carbon is within said oxide of the metal, [2] a
concentration of the carbon in said oxide of the metal
increasing toward said accumulation layer.
App. Br. 29 (Claims App’x) (bracketing added).
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Application 12/544,914
Examiner’s Rejections & References
(1) Claims 44, 45, 48—52, 55, 56, 58—61, and 63 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Mouli (US
2005/0151218 Al; published Jul. 14, 2005), Kobrin et al. (US 2010/0068489
Al; published Mar. 18, 2010; “Kobrin”), and Andideh et al. (US
2005/0161827 Al; published Jul. 28, 2005; “Andideh”). Final Act. 7-16.
(2) Claims 53, 65, 66, and 69 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Mouli, Kobrin, Andideh, and
Rhodes (US 2005/0274994 Al; published Dec. 15, 2005). Final Act. 16-18.
(3) Claims 54 and 57 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mouli, Kobrin, Andideh, and Saito (US
2007/0034981 Al; published Feb. 15,2007). Final Act. 19-20.
(4) Claims 67 and 68 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mouli, Kobrin, Andideh, Rhodes, and Saito. Final
Act. 20-21.
Issues on Appeal
Based on Appellants’ arguments, the dispositive issues on appeal
include the following:
(1) Whether the combination of Mouli, Kobrin, and Andideh
teaches or suggests the disputed limitations: “[i] carbon is within said oxide
of the metal, [ii] a concentration of the carbon in said oxide of the metal
increasing toward said accumulation layer” as recited in claim 44 and
similarly recited in claim 58 (App. Br. 11—19; Reply Br. 4—19);
(2) Whether the Examiner has “articulated reasoning with some
rational underpinning” to support the combination of Mouli, Kobrin, and
Andideh (App. Br. 20-21); and
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Application 12/544,914
(3) Whether Kobrin and Mouli are non-analogous art (App. Br.
21-22).
ANALYSIS
35 U.S.C. § 103(a): Claims 44, 45, 48—52, 55, 56, 58—61, and 63 as
being unpatentable over Mouli, Kobrin, and Andideh
In support of the obviousness rejection, the Examiner finds the
combination of Mouli, Kobrin, and Andideh teaches all limitations of
independent claims 44 and 58. Final Act. 7—9, 11—14. For example, the
Examiner finds Mouli teaches a solid-state imaging device, shown in Figure
17, including:
(1) “an oxide of a metal ... on a surface of a semiconductor
substrate” in the form of an aluminum oxide film 46 deposited on the
surface of a substrate 15, shown in Fig. 17;
(2) “an accumulation layer of a first conductivity-type within
said semiconductor substrate” in the form of a shallow implant 43
within the substrate 15; and
(3) “a well layer of the second conductivity-type within said
semiconductor substrate” in the form of a deeper implant 42 within the
substrate 15.
Id. at 7—8 (citing Mouli HI6, 51, 53—55, Figs. 13 and 17).
Mouli’s Figure 17 is reproduced below with additional markings for
illustration.
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Application 12/544,914
FIG. 17
Mouli’s Figure 17 shows a solid-state imaging device 10 including a well
layer 42 and an accumulation layer 43 within a substrate 15, and an oxide of
metal 466 on the surface of the substrate 15.
The Examiner relies on (1) Korbin for teaching “carbon is within said
oxide of the metal” and (2) Andideh for teaching “a concentration of the
carbon in said oxide of the metal increasing toward said accumulation layer
[within a substrate]” to support the conclusion of obviousness. Id. at 8—9
(citing Korbin H12, 16; and Andideh || 18—20, Fig. 2).
Appellants contend the combination of Mouli, Kobrin, and Andideh
does not teach or suggest the disputed limitations: (1) “carbon is within said
oxide of the metal,” and (2) “a concentration of the carbon in said oxide of
the metal increasing toward said accumulation layer [within a substrate]” as
recited in claim 44 and similarly recited in claim 58. App. Br. 11—19; Reply
Br. 4—19. In particular, Appellants argue:
(1) Mouli “fails to disclose, teach, or suggest a device
wherein carbon is within an oxide of metal, a concentration of
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Application 12/544,914
the carbon in said oxide of the metal increasing toward said
accumulation layer” (App. Br. 12—13);
(2) Kobrin “fails to disclose, teach, or suggest a device
wherein carbon is within an oxide of metal, a concentration of
the carbon in said oxide of the metal increasing toward [said]
accumulation layer [within a substrate]” {id. at 13—14); and
(3) Andideh “fails to disclose, teach, or suggest a
device wherein carbon is within an oxide of metal, a
concentration of the carbon in [said] oxide of the metal
increasing toward said accumulation layer” {id. at 14—19).
With respect to Kobrin, Appellants further argue: (1) “Figure 7A of
Kobrin fails to depict the low surface energy coating 707 touching the
substrate 702”; (2) “Kobrin fails to [teach] the substrate 702 as a
semiconductor substrate”; (3) “Kobrin is silent as to carbon content of the
low surface energy coating 707 increasing toward the substrate 702”; and, as
such, (4) “Kobrin fails to disclose, teach, or suggest a device wherein a
concentration of the carbon in an oxide of metal increases toward an
accumulation layer [within a substrate] of a first conductivity-type.” Id. at
13-14.
With respect to Andideh, Appellants acknowledge “the carbon-doped
oxide (CDO) layer 205 [shown in Figure 2 of Andideh] has a graded
concentration of carbon dopants” but argue that (1) “the dopant
concentration being highest near the metal interconnect 203” and not
“increasing toward said accumulation layer” as recited in claims 44 and 58;
(2) the “carbon-doped oxide (CDO) layer 205 as a chemical composition of
SiOCxHy, which is something other than an oxide of a metal”; and, as such,
(3) “Andideh fails to disclose, teach, or suggest a device wherein a
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concentration of the carbon in an oxide of metal increases toward an
accumulation layer [within a substrate] of a first conductivity-type.” Id. at
14—20.
Because the failure of Mouli, Kobrin, and Andideh to teach these
alleged missing features, Appellants contend the Examiner has not
“articulated reasoning with some rational underpinning” to support the
combination of Mouli, Kobrin, and Andideh. App. Br. 20-21. Lastly,
Appellants contend Kobrin and Mouli are non-analogous art because (1) the
Examiner “fails to explain how and why the skilled artisan would have
concluded that the patterned mold 706 in the assembly in Figure 7A of
Kobrin would have the same purpose as the pixel cell depicted in Figure 17
of Mouli”; and (2) “the nanoimprinting process of Kobrin is non-analogous
art to the pixel cell depicted in Figure 17 of Mouli.” Id. at 21—23.
We do not find Appellants’ arguments persuasive to show reversible
error on the part of the Examiner. In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011). Rather, we find the Examiner has provided a comprehensive
response, supported by a preponderance of evidence, to each of the
contentions raised by Appellants and, as such, adopt as our own the
Examiner’s findings and reasons stated on pages 2—12 of the Examiner’s
Answer. At the outset, we note Appellants’ arguments are predicated upon
(1) multiple attacks of Mouli, Kobrin, and Andideh individually, and
(2) mischaracterization of the Examiner’s reliance on these references. App.
Br. 12—19. For example, Mouli is not relied upon for teaching: (1) “carbon
is within said oxide of the metal” (Kobrin is) and (2) “a concentration of the
carbon in said oxide of the metal increasing toward said accumulation layer
[within a substrate]” (Andideh is) as recited in claim 44 and similarly recited
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in claim 58. Ans. 2—8. Nor is Kobrin relied upon for an express disclosure
of “a concentration of the carbon in said oxide of the metal increasing
toward said accumulation layer” (Andideh is). Final Act. 8; Ans. 6—7.
Likewise, Andideh, not Mouli or Kobrin, is relied upon for teaching “a
concentration of the carbon in said oxide of the metal increasing toward said
accumulation layer [within a substrate].” Final Act. 9; Ans. at 6—8.
“[0]ne cannot show nonobviousness by attacking references
individually where [] the rejection [is] based on a combination of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). Each reference
cited by the Examiner must be read, not in isolation, but for what it fairly
teaches in combination with the prior art as a whole. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986). “The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference .... Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” Keller, 642 F.2d at 425.
Contrary to Appellants’ arguments, we agree with the Examiner that
Mouli teaches Appellants’ claimed “oxide of a metal... on a surface of a
semiconductor substrate” in the context of “aluminum oxide” used to “cover
the surface of the substrate overlying a PNP photodiode.” Mouli ^fl[ 15—16,
Fig. 17. As shown in Mouli’s Figure 17, an “aluminum oxide” 46 is
deposited directly or indirectly on the surface of a substrate 15, via a silicon
dioxide layer 45. However, Mouli describes that a silicon dioxide layer 45 is
optional and “may be optionally removed” leaving an “aluminum oxide” 46
deposited directly on the surface of a substrate 15. Mouli |54. If the silicon
dioxide layer 45 is removed, leaving the aluminum oxide 46 deposited
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Application 12/544,914
directly on the surface of the substrate 15, the accumulation layer 43 within
the substrate 15 would “touch” both the well layer 42 and the “aluminum
oxide 46 in the manner recited in Appellants’ claims 44 and 58.
We also agree with the Examiner that (1) Korbin teaches “carbon is
within said oxide of the metal” and (2) Andideh teaches “a concentration of
the carbon in said oxide of the metal increasing toward said accumulation
layer [within a substrate]” to support the conclusion of obviousness. Final
Act. 9 (citing Korbin H12, 16; and Andideh || 18—20, Fig. 2).
With respect to Kobrin and Mouli, we are not persuaded that Kobrin
and Mouli are non-analogous art and, therefore, cannot be properly used in
the Examiner’s proffered combination. App. Br. 21—22. “Whether a
reference in the prior art is ‘analogous’ is a fact question.” In re Clay, 966
F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v. Dennison Mfg. Co.,
810 F.2d 1561, 1568 n.9 (Fed. Cir. 1987)). Two criteria have evolved for
determining whether prior art is analogous:
(1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and
(2) if the reference is not within the field of the inventor’s
endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved.
Id. at 658-59 (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In
re Wood, 599 F.2d 1032, 1036 (CCPA 1979)). “A reference is reasonably
pertinent if... it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor’s attention in
considering his problem.” Id. at 659. “If a reference disclosure has the same
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Application 12/544,914
purpose as the claimed invention, the reference relates to the same problem,
and that fact supports use of that reference in an obviousness rejection.” Id.
As correctly recognized by the Examiner, “Mouli’s invention relates
to the field of semiconductor devices, such as an imaging device” including
“depositing directly or indirectly a metal oxide, such as an aluminum oxide,
over the substrate 15.” Ans. 9. Similarly, “Kobrin’s invention is directed to
carbon-doped metal oxide coatings for Semiconductors and MEMS (Micro-
Electro-Mechanical Systems) devices” including “imaging devices” as
described by Mouli. Id. As such, we agree with the Examiner that Mouli
and Kobrin are in the same field of endeavor, i.e., improving processes for
“imaging devices” including depositing a metal oxide film over a
semiconductor substrate. Id. at 9-10.
For the reasons set forth above, Appellants have not demonstrated
Examiner error. As such, we sustain the Examiner’s obviousness rejection
of independent claims 44 and 58 and their respective dependent claims 45,
48—52, 55, 56, 59—61, and 63, which Appellants do not argue separately.
App. Br. 27. For the same reasons discussed, we also do not sustain the
Examiner’s remaining obviousness rejections, which include: (1) dependent
claims 53, 65, 66, and 69 based on Mouli, Kobrin, Andideh, and Rhodes; (2)
dependent claims 54 and 57 based on Mouli, Kobrin, Andideh, and Saito;
and (3) dependent claims 67 and 68 based on Mouli, Kobrin, Andideh,
Rhodes, and Saito.
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CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 44, 45, 48—61, 63, and
65-69 under 35 U.S.C. § 103(a).
DECISION
As such, we AFFIRM the Examiner’s final rejection of claims 44, 45,
48—61, 63, and 65—69.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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