Infineon Technologies AG

Patent Trials and Appeals Board

Sep 2, 2021

2020004218 (P.T.A.B. Sep. 2, 2021)

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.
15/817,810 11/20/2017 Markus Zundel 1012-2021 /
2016P51980 US
9336
57579 7590 09/02/2021
MURPHY, BILAK & HOMILLER/INFINEON TECHNOLOGIES
1255 CRESCENT GREEN
SUITE 200
CARY, NC 27518
EXAMINER
WALL, VINCENT
ART UNIT PAPER NUMBER
2822
NOTIFICATION DATE DELIVERY MODE
09/02/2021 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):
official@mbhiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MARKUS ZUNDEL, RAINER PELZER, and
MANFRED SCHNEEGANS
__________

Appeal 2020-004218
Application 15/817,810
Technology Center 2800
___________

Before ADRIENE LEPIANE HANLON, JAMES C. HOUSEL, and
JULIA HEANEY, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON REHEARING

A. STATEMENT OF THE CASE
The Appellant1 requests rehearing of the Decision on Appeal dated June 2,
2021 (“Dec.”). In the Decision, we reversed the rejection of claims 11–18 under
35 U.S.C. § 112(a) based on the written description requirement and entered a new
ground of rejection of claims 11–18 under 35 U.S.C. § 112(b) based on
indefiniteness.

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. The Appellant identifies the real party in interest as Infineon Technologies
AG. Appeal Brief dated February 21, 2020 (“Appeal Br.”), at 2.
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B. DISCUSSION
1. Introduction
Independent claim 11 is reproduced below from the Claims Appendix to the
Appeal Brief. The claim limitation at issue is italicized.
11. A method of processing a power semiconductor device, the
method comprising:
providing a semiconductor body configured to conduct a load
current;
forming a first load terminal electrically connected with the
semiconductor body and configured to couple the load current into
and/or out of the semiconductor body, wherein the first load terminal
comprises a metallization having a frontside and a backside, the
backside interfacing with a surface of the semiconductor body and the
frontside being configured to interface with a wire structure having at
least one wire configured to conduct at least a part of the load current,
wherein forming the first load terminal further comprises:
laterally structuring the frontside of the metallization by
forming at least one local elevation of the metallization so that the
metallization has a local increase of depth in a region of the at least
one local elevation and a lesser, non-zero depth outside the region of
the at least one local elevation, the at least one local elevation having
a height in an extension direction defined by the distance between a
base and a top of the local elevation and, in a first lateral direction
perpendicular to the extension direction, a base width at the base and a
top width at the top, wherein the at least one local elevation is formed
such that the top width amounts to less than 90% of the base width,
wherein there is neither a material barrier within the at least one
local elevation itself nor between the at least one local elevation and a
remaining section of the metallization outside the region of the at
least one local elevation.
Appeal Br. 19 (emphasis added).

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As explained in the Decision, the Examiner determined that claim 11 is
generic to, inter alia, elected Species C1 (Figures 6–9) and non-elected Species C3
(Figures 11–13). Dec. 3.
With respect to the rejection under 35 U.S.C. § 112(a), the Examiner found
that the original disclosure provides written description support for the limitation at
issue with respect to non-elected Species C3 (Figures 11–13) but does not provide
written description support for the limitation at issue with respect to elected
Species C1 (Figures 6–9). Ans. 7.
Figure 11 (non-elected Species C3), reproduced below, illustrates an
electroplating process according to the Appellant’s invention.

Appellant’s Figure 11 depicts Appellant’s electroplating process.
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The process includes the following steps:
Step 21: forming a conductive layer 111 on the top surface 101 of a
semiconductor body by means of carrying out a first electroplating processing
step. Spec. ¶ 80.
Step 22: providing a first mask 31 on top of the conductive layer 111,
wherein the first mask includes at least one first mask element 311 that spatially
confines at least one first opening 312. Spec. ¶ 80.
Step 23: carrying out a second electroplating processing step to fill the at
least one first opening 312 with a conductive material, thereby forming at least one
local elevation 112. Spec. ¶ 80.
The Appellant discloses that
the first and the second electroplating processing steps are carried out
with the same material such that there is no material barrier between
the local elevation 112 and the remaining section of the metallization
111. For example, the same bath is used for carrying out the first and
the second electroplating processing steps.
Spec. ¶ 81 (emphasis added).
Figure 6 (elected Species C1), on the other hand, illustrates an etching
process according to the Appellant’s invention.

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Appellant’s Figure 6 depicts Appellant’s etching process.
The process includes the following steps:
Step 21: forming a conductive layer 111 on the top surface 101 of a
semiconductor body. Spec. ¶ 71.
Step 22: providing a first mask 31 on top of the conductive layer 111,
wherein the first mask includes at least one first mask element 311. Spec. ¶ 71.
Step 24: carrying out a first etch processing step so as to back-thin the
conductive layer 111 in sections not covered by the at least one first mask element
311, wherein the created back-thinning 113 spatially confines the at least one local
elevation 112. Spec. ¶ 71.
2. Rejection under 35 U.S.C. § 112(b)
As explained in the Decision, it is unclear whether the claim limitation at
issue limits the claimed method or the device formed by the claimed method.
Dec. 8. We also explained that it is unclear what conditions are necessary to
satisfy the claim limitation at issue apart from the local elevation(s) and the
remaining metallization section being the same material. Dec. 9.
In the Request, the Appellant argues:
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Since the at least one local elevation 112 [in Figure 6] is formed by
laterally structuring metallization 111 instead of e.g., by adding
another metallization on the frontside 1111 of the metallization 111
[as in Figure 11], there is neither a material barrier within the at least
one local elevation 112 itself nor between the at least one local
elevation 112 and a remaining section of the metallization 111 outside
the region of the at least one local elevation 112.
Req. Reh’g 4 (original emphasis omitted); see also id. at 5 (contending that neither
a material barrier within local elevation 112 itself nor between local elevation 112
and a remaining section of the metallization 111 outside the region of local
elevation 112 exists in Figures 7 and 8 because local elevation 112 is formed by
laterally structuring metallization 111).
The definiteness of the claim language at issue “must be analyzed—not in a
vacuum, but always in light of the teachings of the prior art and of the particular
application disclosure as it would be interpreted by one possessing the ordinary
level of skill in the pertinent art.” In re Moore, 439 F.2d 1232, 1235 (CCPA
1971).
The Appellant discloses that
the metallization 111 has a spatially homogenous material
composition. Accordingly, the material of the at least one local
elevation 112 may be identical to the material of the remaining
section of the metallization. For example, such spatially
homogeneous material composition may be achieved by forming the
at least one local elevation 112 by subjecting an initially thick
conductive layer to one or more etch processing steps . . . .
Spec. ¶ 64 (emphasis added).
Considering the Appellant’s arguments in combination with the Appellant’s
Specification, we conclude that one of ordinary skill in the art would understand
the scope of claim 11. See In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994)
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(“The legal standard for definiteness is whether a claim reasonably apprises those
of skill in the art of its scope.”).
Claim 11 recites the step of “forming at least one local elevation of the
metallization.” Appeal Br. 19. The claim limitation at issue, on the other hand, is
directed to the subsequently formed local elevation(s) (i.e., “the at least one local
elevation itself”) and the section of the metallization that remains after forming the
local elevation(s) (i.e., “a remaining section of the metallization outside the region
of the at least one local elevation”). Appeal Br. 19. Therefore, it is clear that the
limitation at issue limits the device formed by the claimed method.
The Appellant’s arguments in combination with the Specification also make
it clear that the negative claim limitation at issue (i.e., “there is neither a material
barrier”2) merely limits the material of the local elevation(s) and the remaining
section of the metallization. That is, the only condition imposed by the claim
limitation at issue is that the local elevation(s) and the section of the metallization
remaining after forming the local elevation(s) consist of the same material.
Based on the foregoing, the rejection of claims 11–18 under 35 U.S.C.
§ 112(b) is not sustained.
3. Rejection under 35 U.S.C. § 112(a)
As discussed above, the Examiner found that the original disclosure does not
provide written description support for the claim limitation at issue with respect to
elected Species C1 (Figures 6–9). See Final Act. 3; Ans. 7.

2 Appeal Br. 19.
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Claim 12 depends from claim 11.3 Claim 12 is reproduced below from the
Claims Appendix to the Appeal Brief.
12. The method of claim 11, wherein laterally structuring the
frontside of the metallization comprises:
forming a conductive layer on top of the surface;
providing a first mask on top of the conductive layer, the first
mask including at least one first mask element;
carrying out a first etch processing step to back-thin the
conductive layer in sections not covered by the at least one first mask
element, wherein the back-thinning of the conductive layer spatially
confines the at least one local elevation, and wherein the back-
thinning has a first lateral overlap with the at least one first mask
element that amounts to at least 1 µm.
Appeal Br. 20.
According to claim 12, “laterally structuring the frontside of the
metallization” comprises forming a conductive layer on top of the surface of the
semiconductor body and back-thinning the conductive layer to spatially confine the
at least one local elevation. Appeal Br. 20. We interpret the “remaining section of
the metallization outside the region of the at least one local elevation” recited in
claim 11 to correspond to the portion of the “conductive layer” remaining after the
at least one local elevation has been spatially confined. As discussed above, claim
11 requires the local elevation(s) and the remaining section of the metallization
outside the region of the local elevation(s) to consist of the same material.
The Appellant argues:
By processing the same metallization 111 by lateral structuring
(Figures 6-9) . . . to form the at least one local elevation 112, no

3 “Claims in dependent form shall be construed to include all the limitations of the
claim incorporated by reference into the dependent claim.” 37 C.F.R. § 1.75(c)
(2021). Therefore, claim 12 includes all of the limitations of claim 11.
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material barrier is present within the at least one local elevation 112
itself nor between the at least one local elevation 112 and a remaining
section of the metallization 111 outside the region of the at least one
local elevation 112.
Req. Reh’g 7.
To satisfy the written description requirement, an applicant must “convey
with reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention.” Vas-Cath, Inc. v. Mahurkar, 935
F.2d 1555, 1563–64 (Fed. Cir. 1991). The claimed invention “does not have to be
described in ipsis verbis in order to satisfy the description requirement of § 112.”
In re Lukach, 442 F.2d 967, 969 (CCPA 1971). However, “the description must
clearly allow persons of ordinary skill in the art to recognize that [he or she]
invented what is claimed. In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989). A
disclosure may meet this burden by providing either “express” or “inherent”
support for a claimed limitation. Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159
(Fed. Cir. 1998). In order for a disclosure to be inherent, “the missing descriptive
matter must necessarily be present in the . . . application’s specification such that
one skilled in the art would recognize such a disclosure.” Id.
Turning to the Specification, the Appellant discloses that
the metallization 111 has a spatially homogenous material
composition. Accordingly, the material of the at least one local
elevation 112 may be identical to the material of the remaining
section of the metallization. For example, such spatially
homogeneous material composition may be achieved by forming the
at least one local elevation 112 by subjecting an initially thick
conductive layer to one or more etch processing steps . . . .
Spec. ¶ 64 (emphasis added).
That is, as illustrated in Figure 6, the local elevation(s) are formed by
etching or back-thinning a conductive layer. Thus, the local elevation(s) and the
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conductive layer remaining after spatially confining the local elevation(s) (i.e., the
remaining section of the metallization outside the region of the local elevation(s))
necessarily consist of the same material. For that reason, the original disclosure
provides written description support for the following limitation recited in claim
11, “there is neither a material barrier within the at least one local elevation itself
nor between the at least one local elevation and a remaining section of the
metallization outside the region of the at least one local elevation.” Appeal Br. 19.
The rejection of claims 12–18 under 35 U.S.C. § 112(a) based on the written
description requirement is not sustained.
C. DECISION
The Appellant’s Request for Rehearing is granted. Therefore, the Decision
on Appeal dated June 2, 2021, is modified to incorporate the discussion provided
above and the rejections on appeal are reversed.
Outcome of Decision on Rehearing:

Claims
Rejected
35 U.S.C § Reference(s)/Basis Denied Granted
11–18 112(b) Indefiniteness 11–18
11–18 112(a) Written description 11–18
Overall
Outcome
11–18

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Final Outcome of Appeal after Rehearing:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
11–18 112(b) Indefiniteness 11–18
11–18 112(a) Written description 11–18
Overall
Outcome
11–18

GRANTED