Ex Parte Picciotto et al

Patent Trial and Appeal Board

Mar 24, 2014

12380974 (P.T.A.B. Mar. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CARL E. PICCIOTTO and
PETER GEORGE HARTWELL
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Appeal 2012-000810
Application 12/380,974
Technology Center 2800
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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

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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.
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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
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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
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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).
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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
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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
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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