Ex Parte Vaartstra et al

Patent Trial and Appeal BoardNov 29, 2012

11521186 (P.T.A.B. Nov. 29, 2012)

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. 11/521,186 09/14/2006 Brian A. Vaartstra MI22-4218 1711 21567 7590 11/29/2012 Wells St. John P.S. 601 West First Avenue Suite 1300 Spokane, WA 99201-3828 EXAMINER KUNEMUND, ROBERT M ART UNIT PAPER NUMBER 1714 MAIL DATE DELIVERY MODE 11/29/2012 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 BRIAN A. VAARTSTRA and STEFAN UHLENBROCK ____________ Appeal 2011-008693 Application 11/521,186 Technology Center 1700 ____________ Before RICHARD E. SCHAFER, ROMULO H. DELMENDO, and JEFFREY T. SMITH, Administrative Patent Judges. SMITH, Administrative Patent Judge DECISION ON APPEAL Appeal 2011-008693 Application 11/521,186 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 48-58, all of the pending claims. We have jurisdiction under 35 U.S.C. § 6. Appellants’ invention relates to a vapor deposition process for forming a metal oxide layer on a substrate using one or more Group IIA metal diorganoamide precursor compounds, one or more Group VB metal precursor compounds, and optionally one or more other metal-containing precursor compounds (e.g., titanium precursor compounds) and/or one or more reaction gases, such as water vapor, which can be used as a dielectric layer. (Spec. 3). Claim 48 is illustrative: 48. A method of forming a mixed metal oxide, comprising: providing a semiconductor substrate or substrate assembly; providing a first vapor comprising a first precursor having the formula M1(NRR')2, wherein R and R' are each independently an organic group and M1 is selected from the group consisting of barium, strontium, calcium, and magnesium; providing a second vapor comprising a second precursor that includes tantalum or niobium; providing a third vapor comprising a third precursor comprising oxygen; and directing the first, second and third vapors to the semiconductor substrate or substrate assembly to form an oxide comprising M1M2O using a vapor deposition process. Appeal 2011-008693 Application 11/521,186 3 Appellants request review of the following rejections (App. Br. 5-7) from the Examiner’s final office action: 1. Claims 48-58 stand rejected under 35 U.S.C. §103(a) as unpatentable over Vaartstra (U.S. Patent No. 6,730,164 B2 issued May 4, 2004). 2. Claims 48-58 stand rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-54 issued in U.S. Patent No. 7,115,166. 3. Claims 48-58 stand rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-60 issued in U.S. Patent No. 6,730,164. OPINION1 After thorough review of the respective positions provided by Appellants and the Examiner, we REVERSE for the reasons presented by the Appellants and add the following. Prior Art Rejection The Examiner found that the sole difference between the instant claims and Vaartstra (6,730,164) is the specific metal of the second vapor. (Ans. 4). Specifically, Vaartstra does not disclose the second vapor comprising a precursor that includes tantalum or niobium. The Examiner found that “in the absence of unexpected results, it would have been obvious to one of ordinary skill in the art to determine through routine experimentation the optimum, operable second metal in the Vaartstra et al reference in order to create the desired metal compound as the reference does teach using metal oxides.” (Id.). 1 We limit our discussion to independent claims 1 and 20. Appeal 2011-008693 Application 11/521,186 4 We agree with Appellants that each of independent claims 48, 53 and 58 requires a precursor comprising tantalum or niobium. (App. Br. 9). Appellants further argue that Nowhere does Vaartstra disclose or suggest a product containing tantalum or niobium as this subject matter was added to the specification of the present application at the time of filing as a continuation-in-part. Further, the previous disclosure of a group IVB metal does not suggest use of a group VB metal such as tantalum or niobium. The only teaching, suggestion or motivation for a layer or material comprising tantalum or niobium is applicant [sic] present specification, reliance upon which constitutes impermissible hindsight reconstruction. The Examiner’s statement with respect to “the desired compound” accordingly relies upon hindsight reasoning since the only indication that such compound is desirable is applicant’s present specification. Id. The Examiner has not adequately addressed Appellants’ arguments. The Examiner does not explain why the disclosure of a group IVB metal suggests use of a group VB metal such as tantalum or niobium. On the present record, the Examiner has failed to meet the initial burden of establishing a prima facie case of obviousness. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Non-Statutory Obvious-Type Double Patenting The dispositive issue on appeal for the rejections on the ground of non-statutory obvious-type double patenting is: Did the Examiner err in determining that Appellants’ claims 48-58 are not patentably distinct from U.S. Patents 7,115,166 and 6,730,164? Appeal 2011-008693 Application 11/521,186 5 We agree with Appellants that the Examiner has not adequately provided evidence to support the basis of the double patenting rejections. (App. Br. 7-8). According to the Examiner, [a]lthough the conflicting claims are not identical, they are not patentably distinct from each other because the sole difference between the instant claims and the prior art is the addition of the Group VB precursor. However, it would have been obvious to one of ordinary skill in the art to recite the specific second element in the compound semiconductor in order to grow and create the desired semiconductor. Ans. 3. Appellants argue [t]he disclosure of the parent [7,115,166] and grandparent application [6,730,164] does not disclose or suggest any precursor or resulting material or layer comprising tantalum or niobium. This subject matter was added at the time of filing the present Continuation-in-Part application and could not have been suggested by the earlier filed applications. App. Br. 8. The Examiner has failed to identify any specific evidence to support the basis for the addition of the Group VB (i.e., tantalum or niobium) precursor. Therefore, the Examiner has not established that the claims of the cited patents are obvious variations of the claims in the present application. Accordingly, the Examiner’s rejections are reversed. ORDER The rejections of claims 48-58 under 35 U.S.C. § 103(a) and under the ground of non-statutory obvious-type double patenting are reversed. Appeal 2011-008693 Application 11/521,186 6 REVERSED bar