QUALCOMM Incorporated

Patent Trials and Appeals BoardNov 3, 2020

15802268 - (D) (P.T.A.B. Nov. 3, 2020)

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. 15/802,268 11/02/2017 Corey Senowitz 49606.407US01 (164837) 4562 101306 7590 11/03/2020 Haynes and Boone, LLP (36340) IP Section 2323 Victory Avenue, Suite 700 Dallas, TX 75219 EXAMINER YUSHINA, GALINA G ART UNIT PAPER NUMBER 2811 NOTIFICATION DATE DELIVERY MODE 11/03/2020 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): gary.edwards@haynesboone.com ipdocketing@haynesboone.com ocpat_uspto@qualcomm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte COREY SENOWITZ Appeal 2020-000734 Application 15/802,268 Technology Center 2800 BEFORE BEVERLY A. FRANKLIN, CHRISTOPHER C. KENNEDY, and JEFFREY R. SNAY, Administrative Patent Judges. FRANKLIN, 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 1–6 and 8. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Qualcomm Inc. Appeal Br. 2. Appeal 2020-000734 Application 15/802,268 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below (with text in bold for emphasis): A method, comprising: milling a semiconductor device along a first axis to form a first-axis- directed lamella; marking the first-axis-directed lamella with a marker adjacent a region-of-interest (ROI) to form a marked first-axis-directed lamella; sputter depositing the marked first-axis-directed lamella with carbon to form a coated first-axis-directed lamella; milling the coated first axis-directed lamella along a second axis to form a second-axis-directed lamella, wherein the second axis is orthogonal to the first axis. REFERENCES The prior art relied upon by the Examiner is: Appeal 2020-000734 Application 15/802,268 3 Name Reference Date Shimakura 2007/0057666 A1 March 15, 2007 Alvis 2015/0253353 A1 Sept. 10, 2015 Fuller 2015/0369710 A1 March 15, 2007 Wayne Zhao et al., 3D Analytical TEM Approach to Effectively Characterize 3D-FinFET Device Features in Semiconductor Wafer- foundries, 20 Microsc. Microanan. Microscopy Society of America (2014). REJECTIONS 1. Claims 1-6 are rejected under 35 U.S.C. §103 as being unpatentable over Alvis in view of Zhao and Fuller. 2. Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over Alvis in view of Zhao and Fuller, and further in view of Shimakura. OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). Upon review of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports Appellant’s position in the record. Accordingly, we reverse each of the Examiner’s rejections on appeal Appeal 2020-000734 Application 15/802,268 4 essentially for the reasons set forth in the record by Appellant, and add the following for emphasis. In dispute is whether Alvis (for which the Examiner relies upon for teaching the disputed feature (Final Act. 3–4)) teaches the claim feature recited in claim 1 of “milling the coated first axis-directed lamella along a second axis to form a second axis-directed lamella, wherein the second axis is orthogonal to the first axis”. Appellant argues that Alvis does not teach orthogonal second axis milling. Appeal Br. 6. In response, the Examiner provides reasons as to why it is the Examiner’s position that Alvis teaches orthogonal second axis milling. Ans. 4–9. In response thereto, Appellant, in the Reply Brief, repeats the position that Alvis does not teach orthogonal second axis milling, and replies to the Examiner’s aforementioned response. Reply Br. 2–6. Therein, Appellant states, inter alia, that the first milling step recited in claim 1 of “milling a semiconductor device along a first axis to form a first-axis-directed lamella” means the first axis is defining the plane for the lamella as shown in Appellant’s Figure 1, which is reproduced on page 3 of the Reply Brief, with annotations. Reply Br. 3–4. Appellant states that Alvis’ Figure 5 discloses such a first-axis-directed lamella (i.e., the first axis defines the planar face for Alvis’ lamella). Reply Br. 4–5. Appellant states that claim 1, however, also recites “milling the coated first axis-directed lamella along a second axis to form a second axis-directed lamella, wherein the second axis is orthogonal to the first axis.” Reply Br. 5. Appeal 2020-000734 Application 15/802,268 5 Appellant explains that if Alvis had such a second axis to Alvis’ Figure 5, it would appear as follows: Appellant explains that both lamella in this annotation of Avis’ Figure 5 are planar. Appellant states that but because of the axis change, what was the “edge” direction of the first-axis-directed lamella is now the planar face of the second-axis-directed lamella. Similarly, what was planar face of the Appeal 2020-000734 Application 15/802,268 6 first-axis-directed lamella is now the edge of the second-axis-directed lamella. Appellant argues that Alvis never teaches any such axis change. Reply Br. 6. In this context, Appellant persuasively explains how the Examiner’s interpretation of Alvis in this regard is flawed. Reply Br. 2. Appellant explains that the Examiner misconstrues the single-axis milling in Alvis as somehow being a first axis milling followed by an orthogonal second axis milling. Id. Appellant explains that to make the single-axis Alvis milling into a (non-existent) second-axis-directed lamella, the Examiner mixes Cartesian and cylindrical coordinates (Ans. 4). Reply Br. 2. Appellant states that the z axis is a feature of both the Cartesian and cylindrical axis. Appellant explains that, in particular, the Cartesian axes are typically denoted as x ,y, and z, but that same z axis in in the cylindrical coordinate system having axes are typically labeled as z, r, and Ɵ. Id. Appellant states that in this strained reasoning, the Examiner posits (Ans 4– 5) that Alvis mills in the x, z plane (a Cartesian milling) and then somehow mills in a “direction of constant z that is orthogonal to the first milling direction.” Reply Br. 2. Appellant states that it appears that since the Examiner mentions a cylindrical coordinate system, the Examiner views Alvis as teaching milling to create a cylindrical object. Reply Br. 2. Appellant argues that since Alvis has no cylindrically-milled shape, there is no such milling. We agree and therefore are persuaded by this line of argument. It is also noted that this line of argument is not adequately resolved by the Examiner in the record. In view of the above, we reverse each rejection. Appeal 2020-000734 Application 15/802,268 7 CONCLUSION We REVERSE the Examiner’s decision. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Reversed Affirmed 1–6 103 Alvis, Zhao, Fuller 1–6 8 103 Alvis, Zhao, Fuller, Shimakura 8 Overall Outcome 1–6, 8 REVERSED