SONY CORPORATION

Patent Trials and Appeals Board

Mar 25, 2022

2022001538 (P.T.A.B. Mar. 25, 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. 16/196,919 11/20/2018 Yasushi TATESHITA 880001-6435-US03 2310 165569 7590 03/25/2022 MICHAEL BEST & FRIEDRICH LLP (SONY) 790 N WATER ST SUITE 2500 MILWAUKEE, WI 53202 EXAMINER NGUYEN, TUAN H ART UNIT PAPER NUMBER 3991 NOTIFICATION DATE DELIVERY MODE 03/25/2022 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): DCipdocket@michaelbest.com ajheins@michaelbest.com nbenjamin@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YASUSHI TATESHITA ___________ Appeal 2022-001538 Reissue Application 16/196,919 Patent 8,049,286 B2 Technology Center 3900 ____________ Before JOHN A. JEFFERY, ERIC B. CHEN, and MICHAEL J. ENGLE, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2022-001538 Reissue Application 16/196,919 Patent 8,049,286 B2 2 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject reissue claims 1-10, 109-131, and 133-198. Claims 109-131 and 133-198 are new claims. Claims 11-108 and 132 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Appellant seeks to reissue U.S. Patent 8,049,286 (“the ’286 patent”) directed to a semiconductor device with source-drain regions formed to a position deeper than surfaces of element isolation regions (Abstract), such that stress is applied to the channel region (col. 1, ll. 16-17). Reissue claims 1, 8, 133, and 151, reproduced below, are illustrative of the claimed subject matter, with disputed limitations in italics: 1. A semiconductor device comprising: semiconductor substrate with an element formation region projecting from a base portion of said substrate and extending in a first direction along said base portion; element isolation regions buried in said semiconductor substrate such that said element formation region of said semiconductor substrate is flanked by said element isolation regions, said element isolation regions having upper surfaces; a gate electrode on said element formation region with a gate insulating film interposed between said gate electrode and 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 Sony Corporation. (Appeal Br. 3.) Appeal 2022-001538 Reissue Application 16/196,919 Patent 8,049,286 B2 3 said element formation region, said gate electrode crossing said element formation region in a second direction; and source-drain regions formed in said element formation region on both sides of said gate electrode, wherein, said element formation region includes a channel region under said gate electrode, said source-drain regions are positioned within said element formation region so as to extend below said upper surfaces of said element isolation regions, said element isolation regions include depressions in said upper surfaces which extend in said second direction and which flank said channel region, said gate electrode extends into said depressions in said upper surfaces of said element isolation regions and has an upper surface positioned above bottom surfaces of said depressions, said channel region has an upper surface positioned above said bottom surfaces of said depressions, and a depth of said depressions is from 3 nm to 30 nm. 8. The semiconductor device of claim 3, wherein said stress applying layer is an SiN film. 133. The semiconductor device according to claim 10, wherein a difference of a height between said upper surface of said channel region and a part of said bottom surfaces of said depressions is from 3 nm to 30 nm. 151. The semiconductor device according to claim 10, wherein a thickness of one of offset spacers is from 1 nm to 10 nm in said first direction. Appeal 2022-001538 Reissue Application 16/196,919 Patent 8,049,286 B2 4 REFERENCES Name Reference Date Liaw US 7,592,675 B2 Sept. 22, 2009 Yeo et al. US 6,867,433 B2 Mar. 15, 2005 Lee et al. US 2005/0051867 A1 Mar. 10, 2005 REJECTIONS Claims 8, 9, 133, 151, 172, 183, 191, and 197 stand rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claims 1, 10, and 175 stand rejected under 35 U.S.C. § 102(a)(2) as being anticipated by or, in the alternative, under U.S.C. § 103 as being unpatentable over Lee. Claims 1-3, 5-7, 10, 109-113, 117, 133-135, 142-151, 154, 155, 163, 164, 172, 175, 176, 183, 186, and 197 stand rejected under 35 U.S.C. § 103 as being unpatentable by Liaw and Lee. Claims 3, 4, 8, 9, 114-116, 118-131, 136-141, 152, 153, 156-162, 165-171, 173, 174, 177-182, 184, 185, 187-196, and 198 stand rejected under 35 U.S.C. § 103 as being unpatentable over Liaw, Lee, and Yeo. OPINION § 112(b) Rejections-Indefiniteness Dependent Claims 8 and 9 We are unpersuaded by Appellant’s arguments (Appeal Br. 34; see also Reply Br. 3-4) that the limitation “said stress applying layer,” as recited in dependent claims 8 and 9, comply with 35 U.S.C. § 112(b). Appeal 2022-001538 Reissue Application 16/196,919 Patent 8,049,286 B2 5 The Examiner concluded that dependent claims 8 and 9 are indefinite because “[i]n claims 8, 9, ‘said stress applying layer’ lacks antecedent basis.” (Non-Final Act. 3; see also Ans. 3.) We agree with the Examiner’s conclusions. Dependent claim 3 recites “a stress applying film which applies stress to said channel region” (emphasis added). Dependent claim 8 depends from claim 3 and recites “wherein said stress applying layer is an SiN film.” Thus, claim 8 recites “stress applying layer,” rather than “stress applying film,” as recited in claim 3. Because claim 8 recites “stress applying layer,” and claim 3 recites different language, claim 3 provides no earlier recitation of “stress applying layer” and accordingly, the claim is unclear as to what element “stress applying layer” refers. Appellant argues that “Primary Examiner Warren [during the original examination] understood the metes and bounds of the invention found in claims 8 and 9 of the present application” and that M.P.E.P. § 706.04 states “[f]ull faith and credit should be given to the search and action of a previous examiner.” (Appeal Br. 34; see also Reply Br. 3-4.) However, Appellant’s argument with respect to “full faith and credit” does not persuasively rebut the Examiner’s finding that the recitation of “said stress applying layer” in claim 8 lacks an antecedent basis. Thus, we agree with the Examiner that the claim limitation “said stress applying layer” renders dependent claim 8 indefinite. Accordingly, we sustain the rejection of dependent claim 8 under 35 U.S.C. § 112(b). Appeal 2022-001538 Reissue Application 16/196,919 Patent 8,049,286 B2 6 Dependent claim 9 recites limitations similar to those discussed with respect to claim 8, and we sustain the rejection of claim 9, for the same reasons discussed with respect to claim 8. Dependent Claim 151 We are unpersuaded by Appellant’s arguments (Appeal Br. 38) that the limitation “wherein a thickness of one of offset spacers is from 1 nm to 10 nm in said first direction,” as recited in dependent claim 115, complies with 35 U.S.C. § 112(b). The Examiner concluded that the limitation “wherein a thickness of one of offset spacers is from 1 nm to 10 nm in said first direction” renders claim 151 indefinite because “it is unclear as to where the ‘offset spacers’ is defined.” (Non-Final Act. 3; see also Ans. 3.) We agree with the Examiner’s conclusions. Independent claim 10 recites a semiconductor device with several device regions-a semiconductor substrate, element isolation regions, a gate electrode, and source-drain regions-each of which includes location information relative to the other device regions. For example, claim 10 recites that “element isolation regions [are] buried in said semiconductor substrate.” Claim 151 depends from independent claim 10 and further recites “wherein a thickness of one of offset spacers is from 1 nm to 10 nm in said first direction.” In contrast to claim 10, the limitation “wherein a thickness of one of offset spacers is from 1 nm to 10 nm in said first direction” provides no such location information relative to the other regions. Accordingly, dependent claim 151 is indefinite. Appeal 2022-001538 Reissue Application 16/196,919 Patent 8,049,286 B2 7 While the Specification of the ’286 patent discloses that “[t]he offset spacers 23 are made by forming an insulating thin film . . . so as to cover the dummy gate 52, and then etching back the insulating thin film such that the insulating thin film remains only on the side walls of the dummy gate 52” (col. 8, ll. 20-25), such location information about offset spacers 23 cannot be imported from the Specification of the ’286 patent into claim 151. SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim”). Appellant cites to column 8, lines 20-25, as well as Figure 6C of the ’286 patent, and argues that “the metes and bounds of the claims could be understood by the skilled artisan.” (Appeal Br. 38.) However, Appellant’s conclusory statement, without further analysis, does not persuasively rebut the Examiner’s conclusion that claim 151 is indefinite. Thus, we agree with the Examiner that the claim limitation “wherein a thickness of one of offset spacers is from 1 nm to 10 nm in said first direction” renders dependent claim 151 indefinite. Accordingly, we sustain the rejection of dependent claim 151 under 35 U.S.C. § 112(b). Dependent Claims 133, 172, 183, 191, and 197 We are unpersuaded by Appellant’s arguments (Appeal Br. 38; see also Reply Br. 2-7) that the limitation “wherein a difference of a height between said upper surface of said channel region and a part of said bottom Appeal 2022-001538 Reissue Application 16/196,919 Patent 8,049,286 B2 8 surfaces of said depressions is from 3 nm to 30 nm,” as recited in dependent claim 133, complies with 35 U.S.C. § 112(b). The Examiner concluded that the limitation “wherein a difference of a height between said upper surface of said channel region and a part of said bottom surfaces of said depressions is from 3 nm to 30 nm” renders claim 133 indefinite because “it is unclear as to what part of the bottom surfaces of the depressions is considered as ‘a part of said bottom surface’ for used to measure the difference.” (Non-Final Act. 3; see also Ans. 3.) Appellant fails to adequately address the Examiner’s conclusions. Independent claim 10 recites “said channel region has an upper surface positioned above said bottom surfaces of said depressions” (emphases added). Claim 133 depends from claim 10 and recites “wherein a difference of a height between said upper surface of said channel region and a part of said bottom surfaces of said depressions is from 3 nm to 30 nm” (emphasis added). While both independent claim 10 and dependent claim 133 recite “said bottom surfaces of said depressions,” the modifying term “a part of” is recited for the first time in dependent claim 133. However, independent claim 10 does not recite any language in which “said bottom surfaces of said depressions” is further divided into parts, to provide context for the recitation of “a part of” in claim 133. While the ’286 patent discloses that “the depressions 15 are formed in the element isolation regions 13 on both sides of the channel region 14 such that only the channel region 14 projects from the element isolation regions 13” and “an amount of projection of the channel region 14 from the surfaces of the element isolation regions 13 at the bottom of the depressions Appeal 2022-001538 Reissue Application 16/196,919 Patent 8,049,286 B2 9 15 is set at 3 nm to 30 nm inclusive” (col. 5, ll. 1-7), the ’286 patent does not disclose that the bottom of depressions 15 is further divided into parts, to provide context for the recitation of “a part of” in claim 133. Appellant cites to: (i) column 4, line 62 to column 5, line 19; (ii) column 9, lines 38-56; (iii) column 11, lines 8-12; (iv) column 12, lines 60-64; (v) column 17, lines 38-26; and (vi) Figures 3, 4, and 6L of the ’286 patent, and argues that “the metes and bounds of the claims could be understood by the skilled artisan.” (Appeal Br. 38; see also Reply Br. 2-7.) However, Appellant’s conclusory statement, without further analysis, does not persuasively rebut the Examiner’s conclusion that claim 133 is indefinite. In particular, the cited portions of the ’286 patent merely disclose a height difference of “3 nm to 30 nm” between the upper surface of channel region 14 and the bottom surfaces of depressions 15, rather than providing context for the limitation “a part of said bottom surfaces of said depressions,” as recited in claim 133. Thus, Appellant fails to adequately rebut the Examiner’s determination that the claim limitation “wherein a difference of a height between said upper surface of said channel region and a part of said bottom surfaces of said depressions is from 3 nm to 30 nm” renders dependent claim 133 indefinite. Accordingly, we sustain the rejection of dependent claim 133 under 35 U.S.C. § 112(b).2 2 In the event of further prosecution, the Examiner may wish to determine if the claim limitation “a part of said bottom surfaces” (emphasis added) complies with 35 U.S.C. § 112(a) as satisfying the written description requirement. Appeal 2022-001538 Reissue Application 16/196,919 Patent 8,049,286 B2 10 Dependent claims 172, 183, 191, and 197 recite limitations similar to those discussed with respect to claim 133, and we sustain the rejection of claims 172, 183, 191, and 197 for the same reasons discussed with respect to claim 133. § 103 Rejection-Liaw and Lee We are unpersuaded by Appellant’s arguments (Appeal Br. 51-54) that the combination of Liaw and Lee would not have rendered obvious independent claim 1, which includes the limitation “a depth of said depressions is from 3 nm to 30 nm.” The Examiner found that: (i) one embodiment of Liaw, in which the ratio of the height (H) of active region 44 to width (W) of active region 44 is 0.5; and (ii) another embodiment of Liaw, in which channel width W is less than 40 nm, collectively correspond to the limitation “a depth of said depressions is from 3 nm to 30 nm.” (Ans. 13; see also Non-Final Act. 12.) In other words, the Examiner equates the height (H) of Liaw to the claimed “depth.” (See Ans. 13.) We agree with the Examiner’s findings. Liaw relates “to semiconductor devices, and more particularly to memory cells.” (Col. 1, ll. 10-11.) Figure 6 of Liaw, reproduced below, illustrates an intermediate stage in the formation of a unit memory cell, including shallow trench isolation (STI) regions 24, 26, 28, and 30, substrate 20, n-well region 36, p-well regions 40, and active region 44. (Col. 4, ll. 9-20.) Appeal 2022-001538 Reissue Application 16/196,919 Patent 8,049,286 B2 11 Figure 6 of Liaw illustrates an intermediate stage in the formation of a unit memory cell. With respect to Figure 6, which illustrates “an etching process . . . performed to recess top portions of exposed STI regions 24, 26, 28 and 30” (col. 4, ll. 9-10), Liaw explains that “[t]he top surface of STI regions 24, 26, 28 and 30 are preferably recessed by a vertical distance D, which is preferably greater than about 30 nm” (col. 4, ll. 18-20). In a preferred embodiment, Liaw explains that “a ratio of height H of active region 44 to width W is preferably greater than about 0.5” (col. 4, ll. 26-27) and in another embodiment, Liaw explains that “the ratio is about 1, wher[e] channel width W is shrunk to less than, say, 40 nm” (col. 4, ll. 27-29). Because Liaw explains that: (i) in a preferred embodiment H/W = 0.5; and (ii) in another embodiment W = 40 nm, which yield a value of H = 20 nm, which the Examiner equates to the claimed “depth,” Liaw teaches the limitation “a depth of said depressions is from 3 nm to 30 nm.” Appeal 2022-001538 Reissue Application 16/196,919 Patent 8,049,286 B2 12 Appellant argues that “[b]eing that vertical distance H in FIG. 6 of Liaw is greater than about 30 nm, Liaw teaches away from the claimed difference between said channel region and said bottom surfaces of said depressions is from 3 nm to 30 nm, inclusive.” (Appeal Br. 52 (emphases omitted).) Even if Appellant is correct that “Liaw discloses [in column 4, lines 17-18] that the vertical distance H is preferably greater than 30 nm” (Reply Br. 15 (emphasis omitted)) means that the embodiment with a vertical distance H of 20 nm is nonpreferred, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant further argues that “the Office Action fails to highlight any teaching in Liaw that would have been sufficient to show, to the skilled artisan, that vertical distance H in FIG. 6 of Liaw is a variable that is result- effective.” (Appeal Br. 53 (emphasis omitted).) Similarly, Appellant also argues that “another exception to the ‘optimization’ rule of In re Aller[, 220 F.2d 454, 456 (CCPA 1955)] is in cases where the results of optimizing a variable, which was known to be result effective, were unexpectedly good.” (Id. at 54 (emphases omitted).) As rebuttal evidence, Appellant argues that “[t]he specification for the present application explains that the claimed range of 3 nm to 30 nm for the depressions is a range that is critical to the invention.” (Id. at 56 (emphases omitted).) However, the Examiner’s rationale for rejecting claim 1 was not based upon a finding that the vertical distance H of Liaw was a result effective variable. (Ans. 13.) Moreover, as Appeal 2022-001538 Reissue Application 16/196,919 Patent 8,049,286 B2 13 discussed previously, one alternate embodiment of Liaw teaches the limitation “a depth of said depressions is from 3 nm to 30 nm.” Thus, we agree with the Examiner that the combination of Liaw and Lee would have rendered obvious independent claim 1, which includes the limitation “a depth of said depressions is from 3 nm to 30 nm.” Accordingly, we sustain the rejection of independent claim 1 under 35 U.S.C. § 103. Claims 2, 3, 5, 6, and 7 depend from claim 1, and Appellant has not presented any additional substantive arguments with respect to these claims. Therefore, we sustain the rejection of claims 2, 3, 5, 6, and 7 under 35 U.S.C. § 103, for the same reasons discussed with respect to independent claim 1. Independent claims 10 and 175 recite limitations similar to those discussed with respect to independent claim 1, and Appellant has not presented any additional substantive arguments with respect to these claims. We sustain the rejection of claims 10 and 175, as well as dependent claims 109-113, 117, 133-135, 142-151, 154, 155, 163, 164, 172, 176, 183, 186, and 197, for the same reasons discussed with respect to claim 1. § 103 Rejection-Liaw, Lee, and Yeo Although Appellant nominally argues the rejection of dependent claims 3, 4, 8, 9, 114-116, 118-131, 136-141, 152, 153, 156-162, 165-171, 173, 174, 177-182, 184, 185, 187-196, and 198 separately (Appeal Br. 57- 59), the arguments presented do not point out with particularity or explain why the limitations of these dependent claim are separately patentable. Instead, Appellant argues that “Yeo fails to disclose, teach or suggest a Appeal 2022-001538 Reissue Application 16/196,919 Patent 8,049,286 B2 14 depth of said depressions is from 3 nm to 30 nm.” (Id. at 59 (emphasis omitted).) We are not persuaded by this argument for the reasons discussed with respect to claims 1, 10, and 175, from which claims 3, 4, 8, 9, 114-116, 118-131, 136-141, 152, 153, 156-162, 165-171, 173, 174, 177-182, 184, 185, 187-196, and 198 depend. Accordingly, we sustain this rejection. Other Pending Rejections We do not reach the cumulative rejection of claims 1, 10, and 175 under 35 U.S.C. § 102(a)(2) as anticipated by or, in the alternative, under U.S.C. § 103 as obvious over Lee. Affirmance of the obviousness rejection based on Liaw and Lee discussed previously renders it unnecessary to reach the remaining rejection, as claims 1, 10, and 175 have been addressed and found unpatentable. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). CONCLUSION The Examiner’s decision rejecting claims 8, 9, 133, 151, 172, 183, 191, and 197 under 35 U.S.C. § 112(b) is affirmed. The Examiner’s decision rejecting claims 1-10, 109-131, and 133- 198 under 35 U.S.C. § 103 is affirmed. Appeal 2022-001538 Reissue Application 16/196,919 Patent 8,049,286 B2 15 DECISION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 8, 9, 133, 151, 172, 183, 191, 197 112(b) Indefiniteness 8, 9, 133, 151, 172, 183, 191, 197 1, 10, 175 102(a)(2)/103 Lee3 1-3, 5-7, 10, 109- 113, 117, 133-135, 142-151, 154, 155, 163, 164, 172, 175, 176, 183, 186, 197 103 Liaw, Lee 1-3, 5-7, 10, 109- 113, 117, 133-135, 142-151, 154, 155, 163, 164, 172, 175, 176, 183, 186, 197 3, 4, 8, 9, 114-116, 118-131, 136-141, 152, 153, 156-162, 165-171, 173, 174, 177-182, 184, 185, 187-196, 198 103 Liaw, Lee, Yeo 3, 4, 8, 9, 114-116, 118-131, 136-141, 152, 153, 156-162, 165-171, 173, 174, 177-182, 184, 185, 187-196, 198 Overall Outcome 1-10, 109- 131, 133- 198 3 Cumulative rejection. Appeal 2022-001538 Reissue Application 16/196,919 Patent 8,049,286 B2 16 TIME PERIOD FOR RESPONSE 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)(iv). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED