Semiconductor Energy Laboratory Co., Ltd.

Patent Trials and Appeals Board

Nov 9, 2020

15263997 - (D) (P.T.A.B. Nov. 9, 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.
15/263,997 09/13/2016 Shunpei YAMAZAKI 0756-11191 5988
31780 7590 11/09/2020
Robinson Intellectual Property Law Office, P.C.
3975 Fair Ridge Drive
Suite 20 North
Fairfax, VA 22033
EXAMINER
KING, SUN MI KIM
ART UNIT PAPER NUMBER
2813
NOTIFICATION DATE DELIVERY MODE
11/09/2020 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):
ptomail@riplo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHUNPEI YAMAZAKI, HIDEKAZU MIYAIRI,
AKIHARU MIYANAGA, KENGO AKIMOTO, and KOJIRO SHIRAISHI

Appeal 2020-001804
Application 15/263,997
Technology Center 2800

Before ALLEN R. MACDONALD, JEAN R. HOMERE, and
JASON V. MORGAN, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s rejection of claims 6, 7, 10–13, 16–19, 22, 23, 26, and 27, all of
the claims pending.2 Claims App. Claims 1–5, 8, 9, 14, 15, 20, 21, 24, and
25 have been canceled. Id. We have jurisdiction under 35 U.S.C. § 6(b).

1 We refer to the Specification filed Set. 13, 2016(“Spec.”); the Final Office
Action, mailed Oct. 19, 2018 (“Final Act.”); the Appeal Brief, filed July 3,
2019 (“Appeal Br.”); the Examiner’s Answer, mailed Dec. 10, 2019
(“Ans.”); and the Reply Brief, filed Jan. 7, 2020 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Semiconductor Energy Laboratory
Co., Ltd., as the real party-in-interest. Appeal Br. 3.
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An oral hearing was held in this appeal on October 29, 2020. A transcript of
the oral hearing will be entered into the record in due course.
We affirm.
II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to a
semiconductor device having buffer layer (104a, 104b) between oxide
semiconductor layer (103) and a conductive copper film (105a, 105b)
thereby generating a blocking effect against oxygen so as to keep the oxygen
concentration in oxide semiconductor layer (103) within an optimal range by
heat treatment after film formation. Spec. ¶¶ 1, 18, 39.
Figure 9B, reproduced and discussed below, is useful for
understanding the claimed subject matter:

Figure 9B above illustrates a semiconductor device including substrate (100)
having stacked thereon conductive film/gate electrode layer (101), gate
insulating layer (102), oxide semiconductor film (103) containing a first
region and a channel region, buffer layer (104a, 104), and conductive copper
layer (105a, 105b). Spec. ¶¶ 123–27.

More specifically, as Figure 9B above illustrates, the semiconductor
device includes substrate (100) having stacked thereon conductive film/gate
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electrode layer (101), gate insulating layer (102), oxide semiconductor film
(103) containing a first region and a channel region. Id. ¶¶ 18, 39, 23–127.
On the first region of oxide semiconductor film (103) is formed first
conductive film/source electrode (105a) electrically connected thereto via
buffer layer (104a) interposed therebetween, the buffer layer consisting of a
conductive/oxide film containing indium-gallium-zinc-oxygen-titanium. Id.
¶¶ 18, 39. On the channel region of oxide semiconductor film (103) is
formed second conductive film/drain electrode (105b) electrically connected
thereto via buffer layer (104(b) interposed therebetween, the buffer layer
consisting of a conductive/oxide film containing indium-gallium-zinc-
oxygen-titanium. Id. An impurity element imparting n-type conductivity is
contained in buffer layer (104a, 104b) to preserve the oxygen concentration
in the oxide semiconductor layer (103) within an optimal range. Id.

Claims 6, 12, 18, 26 and 27 are independent. Claim 6, reproduced
below with disputed limitations emphasized, is illustrative:
6. A semiconductor device comprising:
a conductive film;
an oxide semiconductor film over the conductive film, the
oxide semiconductor film comprising a first region and a channel
region;
a first conductive film electrically connected to the oxide
semiconductor film with a first film comprising indium, gallium, zinc,
oxygen, and titanium interposed therebetween;
a second conductive film electrically connected to the oxide
semiconductor film with a second film comprising indium, gallium,
zinc, oxygen, and titanium interposed therebetween; and
a pixel electrode electrically connected to the second
conductive film, wherein the oxide semiconductor film comprises an
end portion, a groove portion, and a portion between the groove
portion and the end portion,
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wherein a thickness of the portion is larger than a thickness of
the groove portion and larger than a thickness of the end portion,
wherein the oxide semiconductor film extends beyond a side
edge of one of the first film and the second film, the extended portion
of the oxide semiconductor film being the end portion, and
wherein the first region of the oxide semiconductor film is
interposed between the conductive film and the first conductive film
in a region where the conductive film and the first conductive film
intersect each other.

Appeal Br. 11 (Claims App.).
III. REFERENCES
The Examiner relies upon the following references.3
Name Reference Date
Ono US 6,762,802 B2 July 13, 2004
Yamazaki US 2005/0012097 A1 Jan. 20, 2005
Kang US 6,900,872 B2 May 31, 2005
Sano US 2006/0108636 A1 May 25, 2006
Park US 2008/0258141 A1 Oct. 23, 2008
IV. REJECTIONS
The Examiner rejects the claims on appeal as follows:

Claims 26 and 27 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combined teachings of Park and Sano. Final Act. 2–4.
Claims 6, 7 and 10 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combined teachings of Ono, Park, Kang, and Sano.
Final Act. 4–7.

3 All reference citations are to the first named inventor only.
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Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over
the combined teachings of Ono, Park, Kang, Sano, and Yamazaki. Final
Act. 7.
Claims 12, 13, 16–19, 22, and 23 are rejected under 35 U.S.C. § 103
as being unpatentable over the combined teachings of Ono, Park, Yamazaki
Kang, and Sano. Final Act. 8–16.
V. ANALYSIS
We consider Appellant’s arguments seriatim, as they are presented in
the Appeal Brief, pages 8–13 and the Reply Brief, pages 1–8.4 We are
unpersuaded by Appellant’s contentions. Except as otherwise indicated
herein below, we adopt as our own the findings and reasons set forth in the
Final Action, and the Examiner’s Answer in response to Appellant’s Appeal
Brief. Final Act. 2–17; Ans. 3–5. However, we highlight and address
specific arguments and findings for emphasis as follows.
Appellant argues that the Examiner erred in finding that the
combination of Park and Sano teaches or suggests “a first conductive film
(or first copper film) electrically connected to an oxide semiconductor film
with a first film comprising indium, gallium, zinc, oxygen and titanium
interposed therebetween, and a second conductive film (or second copper
film) electrically connected to the oxide semiconductor film with a second
film comprising indium, gallium, zinc, oxygen and titanium interposed
therebetween,” as recited in independent claims 6, 12, 18, 26 and 27.
Appeal Br. 8. In particular, Appellant argues that there is insufficient

4 We have considered in this Decision only those arguments Appellant
actually raised in the Briefs. Arguments not made are waived. See
37 C.F.R. § 41.37(c)(1)(iv).
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evidence, absent impermissible hindsight, to support the Examiner’s
conclusion that titanium, as disclosed in Sano, would be recognized as
suitable element for doping the first and second films in Park to increase
carrier mobility. Id. at 9 (citing Park ¶ 48, Sano ¶¶ 313). According to
Appellant, although Park indicates that any element can change the
semiconductor layer used in forming the channel layer to a conductive
material layer, Park only recites Al, B, Si, and In as specific examples,
which do not particularly include titanium. Id. at 10. Therefore, Appellant
submits that because Park suggests that source and drain regions include a
predetermined conductive impurity (not any impurity) as dopant to form a
conductive material layer, only the exemplified impurity is predictably
known to change the semiconductor layer into a conductive layer. Id.
Accordingly, Appellant submits that Sano’s disclosure of adding titanium as
an impurity to an amorphous oxide semiconductor thin film is intended to
describe an amorphous oxide that is applicable to the channel layer of
transistor or to form the semiconductor thin film; and there is insufficient
evidence that titanium would predictably increase conductivity in the source
and drain regions of Park’s semiconductor this film. Id. (citing Sano ¶¶ 313,
314). Appellant argues that Sano, at best, teaches that titanium may be used
as an additive to an oxide in a channel region (but not necessarily in the
source and drain) of a semiconductor layer to form a semiconductor thin
film. Id. at 11–12.
Appellant’s arguments are not persuasive of reversible Examiner
error. As a preliminary matter, we note the disputed claim limitations recite
a first film comprising indium, gallium, zinc, oxygen and titanium interposed
between a first conductive film (or first copper film) and an oxide
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semiconductor film electrically connected thereto. The claim limitations
further recite a second film comprising indium, gallium, zinc, oxygen and
titanium interposed between a second conductive film (or second copper
film) and the oxide semiconductor film electrically connected thereto.
Therefore, the disputed claim limitations require a first film and a second
film, each containing at least indium, gallium, zing, oxygen, and titanium.
Each of said films being placed between a conductive film and the
semiconductor film. Because the disputed claim limitations do not require
changing the semiconductor layer into a conductive layer or adding titanium
to the source and drain of the semiconductor layer to enhance the
conductivity thereof, this argument is not commensurate with the scope of
the claim.
Park discloses source (52a) and drain (52b) formed on either side of
an etch stopper (48) to cover corresponding portions of channel layer/
conductive oxide semiconductor (46), all having potentially the same basic
composition of indium, zinc, and oxide (IZO). Park ¶ 48. Park indicates
that a predetermined conductive impurity (e.g., Al, B, Si, In) may be added
to the oxide semiconductor layer to form a conductive material layer, such as
channel layer (46). Id. Park further discloses that source (52a) and drain
(52b) can be another conductive oxide layer to form channel layer (46)
including indium tin oxide (ITO) layer, TiO layer or GaO layer. Id. The
Examiner relies upon Park for its teaching of adding a conductive impurity
(aka dopant) to an oxide semiconductor to thereby increase the conductivity
thereof. Ans. 4 (citing Park ¶¶ 48, 112).
Sano discloses that Ti can be introduced as an impurity to an
amorphous oxide semiconductor thin film to enhance the conductivity
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thereof. Sano ¶¶ 103, 112, 313. Sano also discloses adding Titanium as a
predetermined impurity to increase the conductivity of an oxide
semiconductor film. Id. at 4 citing Sano ¶¶ 112, 313).
We find that the combination of the cited teachings of Park and Sano
is no more than a simple arrangement of old elements with each performing
the same function it had been known to perform, yielding no more than what
one would expect from such an arrangement. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007). Therefore, the ordinarily skilled artisan,
being “a person of ordinary creativity, not an automaton,” would have been
able to fit the teachings of the cited references together like pieces of a
puzzle to predictably achieve a source electrically connected to a conductive
oxide semiconductor film via a first film including indium, gallium, zinc,
oxygen and titanium, and a drain electrically connected to the oxide
semiconductor film via a second film including indium, gallium, zinc,
oxygen and titanium. Appellant has not demonstrated that the Examiner’s
proffered combination would have been “uniquely challenging or difficult
for one of ordinary skill in the art.” Therefore, we agree with the Examiner
that the proposed modification would have been within the capabilities of
the ordinarily skilled artisan. See Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Although Sano’s disclosure of doping pertains to an additive to
enhance the conductivity of semiconductor thin film, the modification
proposed by the Examiner is not a bodily incorporation of Sano’s system
into Park’s.5 Rather, it is directed to using titanium as a dopant to enhance

5 “The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
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the conductivity of the oxide semiconductor layer. Ans. 4–6. Further, we do
not agree with the Appellant that adding such titanium to Park’s oxide
semiconductor would change the principle of operation of Park’s system.
Appeal Br. 12.6 Because Appellant has not proffered any portion of Sano or
Park that discourages, criticizes or otherwise discredits the insertion of such
addition of titanium into the Park’s oxide semiconductor, we agree with the
Examiner that adding titanium to Park’s oxide semiconductor does not teach
away from the claimed subject matter.7 Id. Consequently, we are satisfied

reference …. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). “The obviousness analysis cannot
be confined by the formalistic conception of the words teaching, suggestion,
and motivation, or by overemphasis on the importance of … the explicit
content of issued patents.” KSR, 550 U.S. at 402.
6 The argument that the proposed combination of references would render
one of the references unsuitable for its intended purpose, or would change its
principle of operation, is a teaching away argument. In re Gordon, 733 F.2d
900, 902 (Fed. Cir. 1984) (The court concluded that in effect, “French
teaches away from the board’s proposed modification” because “if the
French apparatus were turned upside down, it would be rendered inoperable
for its intended purpose”) “If references taken in combination would
produce a ‘seemingly inoperative device,’ . . . such references teach away
from the combination and thus cannot serve as predicates for a prima facie
case of obviousness.” McGinley v. Franklin Sports, Inc., 262 F.3d 1339,
1354 (Fed. Cir. 2001) (citation omitted); see also In re ICON Health &
Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007) (“a reference teaches
away from a combination when using it in that combination would produce
an inoperative result,” but the obviousness analysis must account for
“modifications that one skilled in the art would make to a device borrowed
from the prior art”).
7 The Federal Circuit has held “‘[a] reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.’” In
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that, on this record, the combination of Park and Sano would have taught or
at least suggested a source electrically connected to a conductive oxide
semiconductor film via a first film including indium, gallium, zinc, oxygen
and titanium, and a drain electrically connected to the oxide semiconductor
film via a second film including indium, gallium, zinc, oxygen and titanium.
Ans. 4–6. Accordingly, we are not persuaded of error in the Examiner’s
rejections of claims 6, 12, 18, 26, and 27 over the combined teachings of
Park and Sano.
Regarding the rejections of claims 7, 10–11, 13, 16, 17, 19, 22, and
23, Appellant has not presented separate patentability arguments or has
reiterated substantially the same arguments as those previously discussed for
the patentability of claims 6, 12, 18, 26, and 27. As such, claims 7, 10–11,
13, 16, 17, 19, 22, and 23 fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
VI. CONCLUSION
We affirm the Examiner’s rejections of claims 6, 7, 10–13, 16–19, 22,
23, 26, and 27.

re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994))
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VII. DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. § References Affirmed Reversed
26, 27 103 Park, Sano 26, 27
6, 7, 10 103 Ono, Park, Kang, Sano 6, 7, 10
11 103 Ono, Park, Kang, Sano, Yamazaki 11
12, 13, 16–19,
22, 23 103
Ono, Park, Yamazaki
Kang, Sano
12, 13, 16–19, 22,
23
Overall
Outcome
6, 7, 10–13, 16–
19, 22, 23, 26, 27

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED