Idemitsu Kosan Co., Ltd.

Patent Trials and Appeals Board

Mar 30, 2022

2022000079 (P.T.A.B. Mar. 30, 2022)

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. 16/147,424 09/28/2018 Kazuaki EBATA 097898-0236 8803 22428 7590 03/30/2022 FOLEY & LARDNER LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 EXAMINER KIM, JAY C ART UNIT PAPER NUMBER 2815 NOTIFICATION DATE DELIVERY MODE 03/30/2022 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): ipdocketing@foley.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte KAZUAKI EBATA, MAMI NISHIMURA, and NOZOMI TAJIMA ________________ Appeal 2022-000079 Application 16/147,424 Technology Center 2800 ________________ Before ALLEN R. MacDONALD, CAROLYN D. THOMAS, and JASON V. MORGAN, Administrative Patent Judges. MORGAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 5-12, 14-16, and 18. Claims 1-4, 13, 17, and 19-23. are canceled or withdrawn. Appeal Br. 26-29. An oral hearing was held March 10, 2022. A transcript will be entered into the record in due course. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Idemitsu Kosan Co., Ltd., as the real party in interest. Appeal Br. 2. Appeal 2022-000079 Application 16/147,424 2 SUMMARY OF THE DISCLOSURE Appellant’s claimed subject matter relates to a formation of an oxide semiconductor thin film formed by a sputtering method using a “sputtering target including an oxide that includes an indium element (In), a tin element (Sn), a zinc element (Zn), and an aluminum element (Al).” Abstract. REFERENCE The Examiner relies on the following reference (only the first named inventor is listed): Name Reference Date Yano US 8,304,359 B2 Nov. 6, 2012 REJECTIONS The Examiner rejects claims 5-12, 14-16, and 18 as follows: Claims Rejected 35 U.S.C. § Reference(s)/Basis Citation 5-12, 14-16, 18 112 second paragraph Indefiniteness Final Act. 2-9 5-12, 14-16, 18 102(b) Yano Final Act. 10-14 5-12, 14-16, 18 103(a) Yano Final Act. 10-14 ANALYSIS Claims 5, 8, 9, 11, 12, 14-16, and 18 (35 U.S.C. § 112, second paragraph) Claim 5, which is representative with respect to itself and claims 8, 9, 11, 12, 14-16, and 18 with respect to the Examiner’s 35 U.S.C. § 112, second paragraph, rejection of these claims, as well as with respect to itself Appeal 2022-000079 Application 16/147,424 3 and claims 6-12, 14-16, and 18 with respect to the Examiner’s 35 U.S.C. §§ 102(b), 103(a) rejections of these claims, is reproduced below. 5. An oxide semiconductor thin film formed by a sputtering method using a sputtering target in an atmosphere of a mixed gas that comprises: one or more selected from water molecules, oxygen molecules and nitrous oxide molecules; and further comprises rare gas atoms wherein the sputtering target that comprises indium, tin, zinc and aluminum, in an atomic ratio that satisfies the following formulas (1) to (4): 0.10≦ In/(In+Sn+Zn+Al) ≦0.60 (1) 0.01≦Sn/(In+Sn+Zn+Al) ≦0.30 (2) 0.10≦Zn/(In+Sn+Zn+Al) ≦0.65 (3) 0.01≦Al/(In+Sn+Zn+Al) ≦0.30 (4) wherein the sputtering target comprises a homologous structure compound represented by InAlO3(ZnO)m, where m is 0.1 to 10. Appeal Br. 26 (Claims App.). In rejecting claim 5 as indefinite, the Examiner finds: (1) “Appellant does not explain . . . how the claimed process limitations would affect the structure, material composition and electrical characteristics of the claimed oxide semiconductor thin film” (Ans. 3; see also, e.g., Final Act 2-3, 7) (2) “Appellant claims only [an] incomplete list of the sputtering process parameters and conditions for forming the oxide semiconductor thin film” (Ans. 4; see also, e.g., Final Act. 4-6) (3) “one of ordinary skill in the art would not be able to know and determine unambiguously whether the sputtering target has the claimed material composition even when the oxide semiconductor thin film satisfies the claimed ratios of the metallic elements of In, Sn, Zn and Al recited” (Ans. 6; see also id. at 5; Final Act. 7) Appeal 2022-000079 Application 16/147,424 4 (4) “except for [the preamble recitation of ‘An oxide semiconductor thin film’], the remainder of claim 5 is directed to a process of an unspecified sputtering method using the claimed sputtering target having a certain material composition and a certain structure therein” (Final Act. 4) (5) “the claimed oxide semiconductor thin film can be formed by a sputtering method using a plurality of sputtering targets including the claimed sputtering target” (Ans. 4) and “it is not clear where the claimed oxide semiconductor thin film is formed, i.e.[,] what the substrate on which the claimed oxide semiconductor thin film is deposited” (Final Act. 5) Appellant contends the Examiner errs because claim 5’s limitations, even if broad, are proper product-by-process limitations that do not make the claimed invention unclear. Appeal Br. 14. Appellant argues that the Examiner does not show why any omitted elements are essential rather than merely being “preferred or demonstrative.” Id. at 16. And Appellant argues the Examiner errs in rejecting claim 5 because-although the purportedly omitted elements are properties of the claimed oxide semiconductor thin film and of the making of the film that are unknown or not described- “claim 5 and its dependents are not drawn to any of these items.” Reply Br. 3. We agree with Appellant the Examiner errs. “[B]readth is not to be equated with indefiniteness,” In re Miller, 441 F.2d 689, 693 (CCPA 1971), yet the Examiner repeatedly conflates that breadth of claim 5 (e.g., omitted recitations directed to characteristics of the claimed oxide semiconductor thin film and to particulars of the sputtering process used) with indefiniteness. Although the omission of matter disclosed as essential to the invention may form a proper basis for a rejection under 35 U.S.C. § 112(b) or, for pre- AIA applications, 35 U.S.C. § 112, second paragraph, (MPEP § 2172.01), Appeal 2022-000079 Application 16/147,424 5 the Examiner does not identify evidence showing that claim 5 omits matters that the inventors considered essential. See, e.g., In re Wohnsiedler, 315 F.2d 934, 936-37 (CCPA 1963) (a claim to a dehydrohalogenated compound formed as a reaction product of two compounds was indefinite, as evidenced by the Specification’s disclosure that dehydrohalogenation required an additional step and not just a “reaction”). In rejecting a claim as indefinite, the Examiner cannot simply supplant the inventors’ judgment as to what matters are essential with the Examiner’s own judgment and thereby avoid showing that the Specification or the claimed invention itself evinces that the omitted matters are essential.2 Here, the Examiner’s findings do not show that an artisan of ordinary skill would have difficulty determining whether forming an oxide semiconductor thin film using the claimed sputtering method results in a product that infringes the claimed product-by-process. See In re Venezia, 530 F.2d 956, 959 (CCPA 1976) (citing In re Miller, 441 F.2d 689 (CCPA 2 To the extent the purported omission of essential matters renders a claimed invention unpatentable based on objective factors, such as the level of skill of an ordinarily skilled artisan, predictability in the art, and experimentation needed to make or use the invention based on the content of the disclosure, the claimed invention should be rejected under 35 U.S.C. § 112(a) or, for pre-AIA applications, 35 U.S.C. § 112, first paragraph, for lack of enablement. Compare In re Mayhew, 527 F.2d 1229, 1233 (CCPA 1976) (failure to recite a required cooling zone meant a claimed continuous-strip method for producing a coated steel strip was not enabled) with id. at 1235- 36 (Baldwin, J., concurring) (opining that the majority should have also concluded the claimed invention was indefinite); MPEP § 2172.01 (noting that whether a claim that omits essential matter should be rejected as not being enabled or as being indefinite depends on specific facts at issue); In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (detailing factors for determining whether a disclosure would require undue experimentation). Appeal 2022-000079 Application 16/147,424 6 1971)). Moreover, “[f]eatures described as preferred or illustrative in the specification are not critical or essential.” MPEP § 2172.01 (citing In re Goffe, 542 F.2d 564, 567 (CCPA 1976)). We further note that, contrary to the basis for some of the Examiner’s findings (e.g., Ans. 6), claim 5 does not recite the composition of the oxide semiconductor thin film formed using the claimed product-by-process, but instead recites the composition of the sputtering target used in the sputter process used to form the oxide semiconductor thin film. Therefore, we do not agree with the Examiner that claim 5 is indefinite. Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112, second paragraph, rejection of claim 5, or claims 8, 9, 11, 12, 14-16, and 18, which have similar recitations and are similarly rejected. Claims 6 and 7 (35 U.S.C. § 112, second paragraph) Claim 6, which is representative with respect to itself and claim 7 with respect to the Examiner’s 35 U.S.C. § 112, second paragraph, rejection of these claims, is reproduced below. 6. The oxide semiconductor thin film according to claim 5, wherein the atomic ratio of the sputtering target satisfies the following formulas (1) to (4): 0.10≦ In/(In+Sn+Zn+Al) ≦0.60 (1) 0.01≦Sn/(In+Sn+Zn+Al) ≦0.25 (2) 0.10≦Zn/(In+Sn+Zn+Al) ≦0.55 (3) 0.01≦Al/(In+Sn+Zn+Al) ≦0.30 (4) Appeal Br. 26 (Claims App.). In rejecting claim 6 as indefinite, the Examiner finds: [I]t is not clear whether the Sn and Zn atomic ratios recited in claim 6 can be accompanied by the In and Al atomic ratios Appeal 2022-000079 Application 16/147,424 7 recited in claims 5 and 6, because (a) when the Sn atomic ratio changes from 0.01 to 0.30 as recited in claim 5 to 0.01 to 0.25 as recited in claim 6, and the Zn atomic ratio changes from 0.10 to 0.65 as recited in claim 5 to 0.10 to 0.55 as recited in claim 6, the other atomic ratios of In and Al may have to change accordingly, (b) in other words, when there are less Sn and/or Zn atoms in the claimed sputtering target as recited in claim 6 by the reduced upper limits of the Sn and Zn atomic ratios, the other elements of In and Al should have different atomic ratio ranges since otherwise the sum of all the atomic ratios may be less than 100%, which would not make sense, and (c) therefore, it is not clear whether the In and Al atomic ratios remain unchanged in claim 6 even after the atomic ratios of Sn and Zn change. Final Act. 8. The Examiner makes similar findings in rejecting claim 7 as indefinite. Id. at 8-9. Appellant contends the Examiner erred because claims 6 and 7 do not recite changing the atomic ratios of elements that comprise the sputtering target of claim 5, from which claims 6 and 7 depend. Appeal Br. 20-24. Rather, these claims merely narrow the “ranges of the atomic ratio compositions of the four elements” claimed as comprising the sputtering target of claim 5. Id. at 22. We agree with Appellant the Examiner erred. Claim 6, for example, narrows the range of atomic ratios of the elements comprising the sputtering target by requiring that “0.01≦Sn/(In+Sn+Zn+Al)≦0.25” and “0.10≦Zn/(In+Sn+Zn+Al)≦0.55.” These atomic ratio ranges fall within the claim 5 atomic ratios of the elements comprising the sputtering target of “0.01≦Sn/(In+Sn+Zn+Al)≦0.30” and “0.10≦Zn/(In+Sn+Zn+Al)≦0.65.” The recitations of claim 7 similarly narrow the atomic ratios recited in claim 5. Thus, both claim 6 and 7 properly narrow the atomic ratios of the elements that comprise the sputtering target of claim 5. They are not directed Appeal 2022-000079 Application 16/147,424 8 to changing a sputtering target’s composition. Therefore, we do not agree with the Examiner that claims 6 and 7 are indefinite. Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112, second paragraph, rejection of claims 6 and 7. Claim 10 (35 U.S.C. § 112, second paragraph) Claim 10 is reproduced below. 10. The oxide semiconductor thin film according to claim 5, wherein the sputtering target comprises a spinel structure compound represented by Zn2SnO4. Appeal Br. 27 (Claims App.). In rejecting claim 10 as indefinite, the Examiner finds it is not clear whether the claimed oxide semiconductor thin film comprises the claimed spinel structure, because as discussed above, depending on the sputtering method, the claimed oxide semiconductor thin film can be amorphous and may not have any crystallinity, in which case, one of ordinary skill in the art cannot determine whether the oxide semiconductor thin film was formed from the sputtering target having the claimed spinel structure. Non-Final Act. 9. Appellant contends the Examiner errs because “claim 10 does not claim the structure of the thin film produced by a [sputtering] target.” Appeal Br. 24. Appellant argues “[i]t is clear to those skilled in the art that the phrase ‘wherein the sputtering target comprises a spinel structure compound represented by Zn2SnO4’ refers to the structure of the sputtering target.” Id. We agree with Appellant the Examiner errs. Claim 10 is directed to the structure of the sputtering target used in producing an oxide semiconductor thin film, not to the structure of the oxide semiconductor thin film that is Appeal 2022-000079 Application 16/147,424 9 produced. Therefore, we do not agree with the Examiner that claim 10 is indefinite. Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112, second paragraph rejection of claim 10. Claims 5-12, 14-16, and 18 (35 U.S.C. §§ 102(b), 103(a)) In rejecting claim 5 as either being anticipated by or obvious over Yano, the Examiner finds that the oxide semiconductor thin film formed by Yano’s sputtering method and sputtering target would inherently satisfy the requirements of an oxide semiconductor thin film formed using the claimed sputtering method and sputtering target. Final Act. 11. The Examiner alternatively concludes that it would have been obvious to form an oxide semiconductor thin film using a sputtering target having the claimed material composition. Id. In particular, the Examiner notes that Yano discloses a sputtering target having ratios of indium, tin, and zinc that- aside from the inclusion of aluminum in the ratios-overlap with the claimed atomic ratios. Id. at 12 (citing Yano 2:18-26). The Examiner further notes that Yano “disclose[s] that aluminum is one of the impurities that can be added to the InSnZnO” sputtering target. Ans. 8. The Examiner further finds the aluminum “atomic ratio should be controlled and optimized to achieve a desired band gap of the channel layer, which will determine the carrier mobility of the channel layer.” Final Act. 12. Appellant contends the Examiner errs because Yano is not directed to a sputtering target having a specific amount of aluminum, as claimed, but rather merely “allows for aluminum in some cases if ‘the advantageous effect[s] of the invention [of Yano] are not impaired.[’]” Appeal Br. 8 (quoting Yano 3:3-11). Appellant further argues that “Yano describes Appeal 2022-000079 Application 16/147,424 10 forming a conductive transparent electrode, [and] to the extent adding aluminum to the sputtering target improves the semiconductor behavior of the resulting film, it will impair the conductive performance of the transparent electrode.” Id. Appellant further argues Yano does not disclose an appropriate range for aluminum at all and that the Examiner fails to “show how the appropriate atomic ratio of Al impurity can be calculated based on the desired bandwidth.” Reply Br. 9. We agree with Appellant the Examiner errs. The range for the atomic ratio of aluminum to the combined indium, tin, zinc, and aluminum in the claimed sputter target is broad (1% to 30%). Nonetheless, Yano’s mention of aluminum as a potential component of Yano’s sputtering target is brief, is part of a list of thirty-one elements (including all fifteen lanthanoids) that could be part of the Yano’s sputtering target, and is silent regarding the acceptable ratio of the atomic weight of aluminum to the combined atomic weight of indium, tin, zinc, and aluminum in Yano’s sputtering target. Yano 3:6-11. Moreover, although Yano teaches that its transparent conductive film can be used in semiconductor applications by controlling carrier density, Yano’s only examples of how to control carrier density are “adjusting the oxygen differential pressure during film formation[] or subjecting [the film] to a heat treatment in the presence of oxygen after film formation.” Id. at 4:30-35. Thus, the Examiner’s conclusion that that claimed atomic ratio of aluminum to indium, tin, zinc, and aluminum in the claimed sputter target would have been inherent or obvious because “the Al atomic ratio should be controlled and optimized to achieve a desired band gap of the channel layer, which will determine the carrier mobility of the channel layer” (Final Act. 12) is not based on evidence of record in the cited Appeal 2022-000079 Application 16/147,424 11 prior art, but is instead based on speculation and on improper hindsight reasoning (Appeal Br. 5; Reply Br. 5). Furthermore, the Examiner findings and analysis fail to provide “a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process” (e.g., with a sputtering target having an amount of aluminum that may not satisfy the claimed atomic ratios). MPEP § 2113 (citing In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983)). For these reasons, we do not agree with the Examiner that using Yano’s sputtering method and sputtering target to produce a thin film would result in a thin film that inherently satisfies the requirements of an oxide semiconductor thin film formed using the claimed sputtering method and sputtering target. We also do not agree with the Examiner that it would have been obvious to form an oxide semiconductor thin film using a sputtering target having the claimed material composition. Accordingly, we do not sustain the Examiner’s 35 U.S.C. §§ 102(b), 103(a) rejections of claim 5, and claims 6-12, 14-16, and 18, which contain similar recitations. Appeal 2022-000079 Application 16/147,424 12 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 5-12, 14-16, 18 112 Indefiniteness 5-12, 14- 16, 18 5-12, 14-16, 18 102(b) Yano 5-12, 14- 16, 18 5-12, 14-16, 18 103(a) Yano 5-12, 14- 16, 18 Overall Outcome 5-12, 14- 16, 18 REVERSED