Ex Parte Sasaki et al

Patent Trial and Appeal Board

Aug 28, 2017

13920442 (P.T.A.B. Aug. 28, 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.
13/920,442 06/18/2013 Toshinari SASAKI 0756-10172 5095
31780 7590 08/30/2017
Robinson Intellectual Property Law Office, P.C.
3975 Fair Ridge Drive
Suite 20 North
Fairfax, VA 22033
EXAMINER
MAZUMDER, DIDARUL A
ART UNIT PAPER NUMBER
2819
NOTIFICATION DATE DELIVERY MODE
08/30/2017 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):
ptomail @ riplo .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOSHINARI SASAKI, TAKASHI HAMOCHI,
TOSHIYUKI MIYAMOTO, MASAFUMI NOMURA,
JUNICHI KOEZUKA, and KENICHI OKAZAKI
Appeal 2016-000790
Application 13/920,442
Technology Center 2800
Before JEAN R. HOMERE, MICHAEL J. STRAUSS, and
PHILLIP A. BENNETT, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-000790
Application 13/920,442
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—19. Claims App’x. We have jurisdiction under 35 U.S.C. § 6(b).
We heard oral arguments on August 17, 2017. A transcript of the hearing
will be added to the record in due course.
We REVERSE.
THE INVENTION
The claims are directed to a semiconductor device. Spec., Title.
Claim 1, reproduced below with the disputed limitation emphasized in
italics, is illustrative of the claimed subject matter:
1. A semiconductor device comprising:
a gate electrode;
an oxide semiconductor film overlapping with a part of the
gate electrode with a gate insulating film interposed
therebetween;
a pair of electrodes in contact with the oxide
semiconductor film; and
a nitride insulating film over the oxide semiconductor
film,
wherein in the case where the nitride insulating film is
analyzed by thermal desorption spectroscopy, hydrogen
molecules less than 5 x 1021 molecules/cm3 and ammonia
molecules less than 1 * 1022 molecules/cm3 are released.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Mishima
Yamazaki ’266
Yamazaki ’914
Yamazaki ’170
Tsubuku
US 2009/0008724 A1
US 2011/0269266 A1
US 2011/0303914 A1
US 2012/0001170 A1
US 2012/0112045 A1
Jan. 8, 2009
Nov. 3,2011
Dec. 15,2011
Jan. 5, 2012
May 10, 2012
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Application 13/920,442
REJECTION
The Examiner made the following rejections:
Claims 1—6, 8—11 and 15—19 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Tsubuku. Final Act. 3—12.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsubuku and Yamazaki ’914. Final Act. 13.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsubuku and Yamazaki ’266. Final Act. 13—14.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsubuku and Yamazaki ’170. Final Act. 14—15.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsubuku, Yamazaki ’266, and Mishima. Final Act. 15.
APPELLANTS’ CONTENTIONS
1. Appellants contend the disputed limitation defines a property of the
nitride insulating film, not a product-by-process limitation as asserted
by the Examiner, and is entitled to patentable weight.
2. Appellants contend, contrary to the Examiner’s emphasis on hydrogen
content of the nitride insulating film, the relevant property of the
nitride insulating film is the amount of hydrogen or nitrogen that is
released into, for example, the adjacent oxide semiconductor film.
App. Br. 10-12.
3. Appellants contend the Examiner’s determination that the disputed
limitation is design optimization obtained by trial and error is
applicable only under rejections under 35 U.S.C. § 103(a), not under
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§ 102(b) as in the instant rejection, and, even then, improper because
of a failure of the prior art to recognize the parameters of the disputed
limitation to be result-effective variables. App. Br. 12—15.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner has erred in rejecting independent claims 1, 9, and
16 under 35 U.S.C. § 102(b) as being anticipated by Tsubuku. We agree
with Appellants’ conclusions as to this rejection of the claims.
In connection with contention 1, we agree with Appellants that the
disputed limitation is not product-by-process. “A product-by-process claim
is one in which the product is defined at least in part in terms of the method
or process by which it is made.” See SmithKline Beecham Corp. v. Apotex
Corp., 439 F.3d 1312, 1315 (Fed. Cir. 2006) (internal quotation omitted).
The disputed limitation does not describe how to make the nitride insulating
film. Instead, the disputed limitation describes a property of the film, i.e.,
that the film releases a limited amount of unwanted contaminants (i.e.,
hydrogen and ammonia molecules) under defined conditions (i.e., “in the
case”1 or “when” analyzed by thermal desorption spectroscopy (“TDS”)).
1 Independent claims 1 and 10 recite “wherein in the case where the nitride
insulating film in analyzed by thermal desorption spectroscopy” a given
property is exhibited, i.e., a recited maximum number of hydrogen and
ammonia molecules are released. We do not decide whether the quoted
language requires the property to be present in the absence of performance
of the stated analysis (although such an interpretation requiring the property
regardless of whether the analysis is performed is consistent with the
Specification) neither do we decide whether performance of the stated
analysis is a requirement of the claim. We note in passing the corresponding
language of independent claim 16 does not appear to raise these issues.
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Application 13/920,442
The Examiner appears to acknowledge as much; “the TDS analysis in the
independent claims [is] related to the final device structure as it is a tool to
analyze the composition of gaseous molecules in nitride insulating layer but
it’s not either a part of the device structure or a manufacturing process step.”
Advisory Action mailed March 11, 2015, p. 2. Therefore, because the given
basis for disregarding the disputed limitation as product-by-process is
erroneous, the Examiner erred in affording the limitation no patentable
weight.
Appellants’ contention 2 does not address a particular rejection and,
therefore, is not properly before the Board. However, for completeness, we
find no fault in Appellants’ explanation that the Examiner’s “focus on the
total amount of molecules remaining in the nitride insulating film is not
believed to be germane at all to the invention or patentability . . . .” App. Br.
12 ; see Ans. 6 (“the [EJxaminer considers it is important to analyze the
gaseous molecules by the TDS that is remained in the nitride insulating layer
rather than how much of the gaseous molecules releasing from the nitride
insulating layer.”). Appellants explain
the problems with the operation of the oxide semiconductor
device have been found to be the result of hydrogen or nitrogen
becoming ‘released’ into the oxide semiconductor film from the
insulating film, not as a result of any hydrogen (or ammonia)
molecules remaining in the insulating film for reasons better
explained below.
App. Br. 10. Although “Examiners are encouraged to suggest claim
language to applicants to improve the clarity or precision of the language
used, [they] should not insist on their own preferences if other modes of
expression selected by applicants satisfy the statutory requirement.” MPEP
§2173.01(III)(B). Therefore, absent any findings by the Examiner that the
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claims are deficient under, for example, 35 U.S.C. § 112, we do not further
consider the merits of this contention.
In connection with contention 3, the Examiner finds
It was not necessarily required to show the claimed range [of the
disputed limitation], as it was a part of design optimization which
is [or] can [be] obtained by [trial] and error methods of
experimentation in the semiconductor manufacturing process.
Each and every element as set forth in the claim [is] described
either expressly or inherently in the prior art reference of
Tsubuku et al.
Ans. 7. Appellants argue the Examiner “has failed to establish such
inherency and Appellant's Samples A 1-A3 rebut any such assertion by
providing evidence that all nitride insulating films do not necessarily meet
the claimed molecule ranges.” App. Br. 13. Addressing design
optimization, Appellants argue a finding the claimed range is obtainable by
trial and error methods is “a misplaced grounds for rejection potentially
available under obviousness (35 U.S.C. §103), but not available under the
current anticipation rejection (35 U.S.C. §102).” App. Br. 13. Appellants
further argue design optimization is improper because the Examiner “has
failed to establish any evidence that the amount of ‘releasable’ hydrogen is a
result-effective variable.” Id. citing MPEP §2144.05(11)(8) and In re
Antonie, 559 F.2d 618 (CCPA 1977).
We agree with Appellants. In support of the anticipation rejection the
Examiner has failed to provide sufficient evidence to “make clear that the
missing descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.”
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (cited by Appellants at
App. Br. 12). Furthermore, Appellants correctly argue the Examiner’s
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reliance on routine optimization is improper. Modifications that would have
been known to a person of ordinary skill are irrelevant to whether a
reference anticipates a claim under 35 U.S.C. § 102. Titanium Metals Corp.
v. Banner, 778 F.2d 775, 780 (Fed. Cir. 1985) (“[Ajnticipation under § 102
can be found only when the reference discloses exactly what is claimed and
that where there are differences between the reference disclosure and the
claim, the rejection must be based on § 103 which takes differences into
account.”) Still further, even under 35 U.S.C. § 103(a), the failure to
provide sufficient evidence “that one skilled in the art would necessarily
have appreciated the advantageous effects of providing a nitride insulating
film in a semiconductor device within the claimed range” (App. Br. 13)
renders a rejection based on obviousness improper.
For the reasons discussed supra, we do not sustain the rejection of
independent claim 1 under 35 U.S.C. § 102(b) and, for the same reasons, we
do not sustain the rejection of independent claims 9 and 16 or the rejection
of dependent claims 2—6, 8, 10, 11, 15, and 17—19. Furthermore, we do not
sustain the rejection of claim 7 or claims 12—14 under 35 U.S.C. § 103(a) as
the Examiner’s applications of the Yamazaki and Mishima references fail to
cure the deficiency in the base rejection addressed supra.
DECISION
The Examiner’s decision to reject claims 1—19 is reversed.
REVERSED
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