Ex Parte Picciotto et alDownload PDFPatent Trial and Appeal BoardMar 24, 201412380974 (P.T.A.B. Mar. 24, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CARL E. PICCIOTTO and PETER GEORGE HARTWELL ____________________ Appeal 2012-000810 Application 12/380,974 Technology Center 2800 ____________________ Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-000810 Application 12/380,974 2 Appellants1 seek relief under 35 U.S.C. § 134(a) from the Examiner’s final rejection2 of Claims 32-37, 53, and 55 under 35 U.S.C. § 103(a) as unpatentable over the combination of Hildner,3 Binnig,4 and Curtis.5 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.6 STATEMENT OF THE CASE The invention relates to a method of electrically coupling a micrometer-scale or smaller geometry doped semiconductor region to a micrometer-scale or smaller geometry wire in a system wherein a first device has a first surface and includes the doped semiconductor region extending along the first surface, a second device has a second surface opposite the first surface of the first device and includes the wire extending through the second device to a position in proximity to the second surface of the second device (Spec. [0007]). The method comprises displacing the first and second devices relative to each other; receiving a signal from a sensor indicating a relative position of wire and the doped semiconductor region; 1 Appellants identify the Real Party in Interest in this appeal as Hewlett- Packard Development Company, LP of Houston, TX. App. Br. 3. 2 Final Office Action mailed December 16, 2010. 3 M. L. Hildner & R. J. Phaneuf, Imaging the depletion zone in a Si lateral pn junction with scanning tunneling microscopy, 72 Applied Physics Letters, 3314-3316 (1998). 4 Gerd Binnig & Heinrich Rohrer, Scanning tunneling microscopy–from birth to adolescence, 59 REVIEWS OF MODERN PHYSICS, 615-625 (1987). 5 Curtis, Robert, et al., An ultrahigh vacuum high speed scanning tunneling microscope, 68 Rev. Sci. Instrum., 2790-2796 (1997). 6 Our decision refers to Appellants’ Appeal Brief (App. Br.) filed May 12, 2011, the Examiner’s Answer (Ans.) mailed July 29, 2011, and Appellants’ Reply Brief (Reply Br.) filed September 27, 2011. Appeal 2012-000810 Application 12/380,974 3 determining whether the wire and the doped semiconductor region are aligned in response to the signal from the sensor; and in response to determining that the wire and the doped semiconductor region are aligned, applying a force to at least one of the wire and the doped semiconductor region to bring the wire and the doped semiconductor region closer together (id. at [0007] and [0044]). Independent claim 32, set forth below, is illustrative of the subject matter on appeal: 32. A method of electrically coupling a micrometer-scale or smaller geometry doped semiconductor region to a micrometer-scale or smaller geometry wire in a system wherein a first device has a first surface and includes the doped semiconductor region extending along the first surface, a second device has a second surface opposite the first surface of the first device and includes the wire extending through the second device to a position in proximity to the second surface of the second device, the method comprising: displacing the first and second devices relative to each other; receiving a signal from a sensor indicating a relative position of wire and the doped semiconductor region; determining whether the wire and the doped semiconductor region are aligned in response to the signal from the sensor; and in response to determining that the wire and the doped semiconductor region are aligned, applying a force to at least one of the wire and the doped semiconductor region to bring the wire and the doped semiconductor region closer together. App. Br. 16, Claims App’x. (italics added.) The Issue Presented The dispositive issue before us on appeal with regard to independent claim 32 is whether the Examiner reversibly erred in finding Hildner teaches “in response to determining that the wire and the doped semiconductor Appeal 2012-000810 Application 12/380,974 4 region are aligned, applying a force to at least one of the wire and the doped semiconductor region to bring the wire and the doped semiconductor region closer together” (Ans. 6), thereby supporting the conclusion that Appellants’ claimed invention would have been obvious to one of ordinary skill in the art. We answer this question in the affirmative and therefore reverse the Examiner’s rejection of the claims as unpatentable over the combination of Hildner, Binnig, and Curtis. ANALYSIS Claim 32 requires, inter alia, in response to determining that the wire and the doped semiconductor region are aligned, applying a force to at least one of the wire and the doped semiconductor region to bring the wire and the doped semiconductor region closer together. The Examiner finds the p stripe running through the center of the n-type Si(001) wafer in Hildner’s Fig. 1(a) corresponds to the “doped semiconductor region,” and the tip of Hildner’s scanning tunneling microscope (STM) corresponds to the wire (Ans. 5.) The Examiner finds the STM tip is displaced near the wafer because it scans to form the image in Fig. 1(a) (id.). The Examiner further finds the STM image in Hildner’s Fig. 1(a) reveals that the tip is not on the p stripe in the darker regions on the edges of stripe, and the tip height in Hildner’s Fig. 1(b) shows when the tip is above the p stripe since the p stripe is imaged as a depression compared to the n regions (id. at 5-6.) With respect to the claimed step “in response to determining that the wire and the doped semiconductor region are aligned, applying a force to at least one of the wire and the doped semiconductor region to bring the wire Appeal 2012-000810 Application 12/380,974 5 and the doped semiconductor region closer together,” the Examiner finds Hildner’s Figure 3 shows current-voltage (I-V) curves obtained at five different locations, i.e., “a,” “b,” “c,” “d,” and “e,” and the tip height for each location is different and set by a 4 nA demanded current at -1.0 V (id. at 6). The Examiner concludes that “[b]ecause each tip height from the semiconductor surface was different, then for some of the five locations, in response to being at one of the five locations, the force applied to the STM tip to maintain 4 nA at -1 V necessarily involved moving the wire and the doped semiconductor region closer together” (id. at 6-7). Appellants contend that Hildner does not apply a force to either the pn junction device of Figure 1(a) or the STM tip to bring them closer together in response to a determination that they are aligned with each other (App. Br. 8.) Instead, Appellants argue that the STM tip must be brought close to the silicon surface in order to scan the surface from left to right, not in response to a determination that the tip and p stripe are aligned (id. at 8-9; Reply Br. 4). With regard to the Examiner’s finding that Hildner brings the STM tip closer to the p stripe in order to maintain the 4nA current, Appellants urge that this purpose makes it clear that the STM tip in Figure 3 is not brought closer in response to alignment of the tip and p stripe (App. Br. 10). Further, Appellants dispute the Examiner’s finding that arrival of the STM tip at the five different locations in Figure 3 is a recognition that the STM tip is aligned with the device at each location (Reply Br. 5.) Appellants urge that Hildner, in producing the data of Figure 3, does not teach or suggest that the STM tip is moved closer to the silicon surface in response to determining that the tip is aligned with the p stripe (id. at 6). Appeal 2012-000810 Application 12/380,974 6 We have considered the respective positions clearly articulated by the Examiner and Appellants, and find a preponderance of the evidence favors Appellants. We agree with Appellants that the Examiner has not established that Hildner performs the method of claim 32 including a step of applying a force to bring the tip and the p-stripe closer together in response to determining that the tip and p-stripe are aligned. Hildner’s Figures 1(a) and 1(b) are obtained by STM, and the STM tip scans across the surface from left to right at 0.31 lines/s with a tunnel current of 0.3 nA, a sample bias of -2V for Fig. 1(a), and a sample bias of either +2V or -2V for Fig. 1(b) (Hildner, p. 3314, legend of Fig. 1). While the STM receives a signal, i.e., the image in Figure 1(a) or the tip height as a function of displacement distance in Figure 1(b), there is no alignment determination of the tip at point “e,” i.e., the center of the p stripe (doped semiconductor region), in response to such signal when performing the STM. In other words, there is no determination of alignment as here claimed because the STM performs a scan of the surface including the n regions as well as the p stripe. Since there is no alignment, as Appellants contend, the STM does not, in response to determining that the STM tip and p stripe are aligned, apply a force to at least one of the STM tip and p stripe to bring the STM tip and the p stripe closer together. After Figures 1(a) and 1(b) are obtained by STM, Hildner obtains Figure 3 by a different technique, i.e., scanning tunneling spectroscopy (STS), at locations “b,” “c,” “d,” and “e” indicated in Fig. 1(b), as well as location “a” not shown in Fig. 1(b). Hildner, pp. 3314-3315. During STS, Hildner does not determine that the tip and any of the five points are aligned in response to a signal from a sensor indicating relative positions of the tip Appeal 2012-000810 Application 12/380,974 7 and p-stripe. In fact, these points are known points as a result of the STM in Figures 1(a) and 1(b). Additionally, for Figure 3, the respective tip heights for curves “a” to “e” are first determined based on a 4 nA demanded current at -1V sample bias, and then the I-V curves seen in Fig. 3 are obtained at the determined tip heights (id. at p. 3315). Thus, for example, while the tip and the surface of the wafer at location “e,” i.e., the center of the p stripe, are aligned in order to obtain curve “e,” a force on at least one of the tip and p stripe to bring the tip and p stripe closer together is not applied in response to such alignment. Rather, any application of force, which could move the tip and wafer further apart or closer together, would be in response, not to a determination of alignment, but to the 4 nA demanded current at -1V sample bias for setting the tip height needed for generating each curve. The Examiner does not direct our attention to any teaching or suggestion in Hildner that the tip is moved closer when brought over the p-stripe relative to other locations on the structure’s surface. The Examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions, or hindsight reconstruction to supply deficiencies in the factual basis. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“To facilitate review, [the obviousness] analysis should be made explicit.”); see also, In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”), quoted with approval in KSR, 550 U.S. at 418. We find the Examiner has not supplied the requisite rational underpinning to support the Appeal 2012-000810 Application 12/380,974 8 obviousness conclusion for the reasons set forth above. Accordingly, we cannot sustain the Examiner’s obviousness rejection based upon the combination of Hildner, Binnig, and Curtis. CONCLUSION For the foregoing reasons, we hold that the Examiner has failed to establish the combination of Hildner, Binnig, and Curtis makes obvious the claimed invention to one of ordinary skill in the art. We therefore reverse the 35 U.S.C. § 103 rejection of Claims 32-37, 53, and 55. REVERSED cdc Copy with citationCopy as parenthetical citation