YAMAZAKI, Shunpei et al.

Patent Trials and Appeals Board

Sep 1, 2020

2019004567 (P.T.A.B. Sep. 1, 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.
12/880,286 09/13/2010 Shunpei YAMAZAKI 0756-8965 8836
31780 7590 09/01/2020
Robinson Intellectual Property Law Office, P.C.
3975 Fair Ridge Drive
Suite 20 North
Fairfax, VA 22033
EXAMINER
KIM, JAY C
ART UNIT PAPER NUMBER
2815
NOTIFICATION DATE DELIVERY MODE
09/01/2020 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, MASASHI TSUBUKU, and
HIROMICHI GODO
Appeal 2019-004567
Application 12/880,286
Technology Center 2800
Before N. WHITNEY WILSON, DEBRA L. DENNETT, and
LILAN REN, Administrative Patent Judges.
REN, 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 9, 12, 13, 16, 24, and 25. See Final Act.
2. We have jurisdiction under 35 U.S.C. § 6(b). A hearing was held July 22,
2020.
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as “Semiconductor
Energy Laboratory Co., Ltd.” Appeal Br. 3.
Appeal 2019-004567
Application 12/880,286
2
CLAIMED SUBJECT MATTER
The claims are directed to a semiconductor device and method for
manufacturing the device. Spec. ¶ 1. Claim 9, reproduced below, is
illustrative of the claimed subject matter:
9. A semiconductor device comprising a transistor, the
transistor comprising:
a gate electrode layer over a substrate having an insulating
surface, the gate electrode layer comprising a material selected
from the group consisting of Al, Cr, Cu, Ta, Ti, Mo, W, and an
alloy thereof;
a gate insulating layer over the gate electrode layer, the
gate insulating layer comprising silicon, nitrogen and oxygen;
an oxide semiconductor layer over the gate insulating
layer, the oxide semiconductor layer comprising indium,
gallium, zinc and oxygen;
a source electrode layer and a drain electrode layer over
the oxide semiconductor layer, each of the source electrode layer
and the drain electrode layer comprising a metal selected from
the group consisting of Al, Cr, Cu, Ta, Ti, Mo, Wand an alloy
thereof; and
a protective insulating layer in contact with a part of the
oxide semiconductor layer, the source electrode layer, and the
drain electrode layer,
wherein the protective insulating layer comprises silicon,
oxygen and nitrogen,
wherein an amount of change in threshold voltage is less
than or equal to 3 V in a temperature range of -25 °C to 150 °C,
wherein a channel length of the transistor is 3 μm to 10 μm
inclusive, and wherein a thickness of the oxide semiconductor
layer is 10 nm to 50 nm inclusive.
Claims Appendix (Appeal Br. 21).
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REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Ofuji WO 2008/139940 Al Nov. 20, 2008
Matsunaga WO 2008/126883 Al Oct. 23, 2008
Kim US 2009/0321732 A1 Dec. 31, 2009

REJECTION
Claims 9, 12, 13, 16, 24, and 25 are rejected under pre–
AIA 35 U.S.C. § 103(a) as unpatentable over Matsunaga in view of Ofuji
and further in view of Kim. Final Act. 2.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 2010 WL 889747, *4 (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.”)). After having considered
the evidence presented in this Appeal and each of Appellant’s contentions,
we are not persuaded that reversible error has been identified, and we affirm
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Application 12/880,286
4
the Examiner’s § 103(a) rejection for the reasons expressed in the Final
Office Action and the Answer. We add the following primarily for emphasis.
Claim 92
In rejecting claim 9, the Examiner finds that the combined prior art
teaches or suggests semiconductor device having the recited structures. Final
Act. 2–6. Based on a rationale to combine and the finding that the combined
prior art teaches or suggests “all the claimed structural, material composition
and dimensional/numerical limitations,” the Examiner finds that the
combined prior art device would exhibit the recited parameter, i.e., “an
amount of change in threshold voltage [which] is less than or equal to 3 V in
a temperature range of -25 °C to 150 °C”. Id. at 3–7.
Appellant does not structurally distinguish the prior art, nor does
Appellant address the Examiner’s rationale to combine. Appellant instead
argues that the recited voltage threshold parameter is not taught or
suggested. Appeal Br. 10–11 (arguing that “there appears to be insufficient
articulated evidence as to why Kim’s alleged threshold voltage . . . was
combinable with and achievable in the modified combination of Matsunaga,
Ofuji and Kim”).
Where . . . the claimed and prior art products are identical
or substantially identical . . . the PTO can require an applicant
to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product.
Whether the rejection is based on ‘inherency’ under 35 U.S.C.
§ 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO’s inability to manufacture
products or to obtain and compare prior art products.

2 Appellant does not separately argue for the rejection of claims 12, 13, 16,
24, 25. See Appeal Br. 8–17. These claims stand or fall together. See id.; see
also 37 C.F.R. § 41.37(c)(1)(vii).
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In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote
omitted).
In this case, Appellant’s arguments, based on the assertion that “there
is NO evidence of record to support” the recited threshold voltage (Appeal
Br. 11), do not rebut the Examiner’s finding that structural identity results in
identity of properties exhibited by the structures. “From the standpoint of
patent law, a compound and all of its properties are inseparable; they are one
and the same thing.” In re Papesch, 315 F.2d 381, 391 (CCPA 1963).
Appellant’s argument is unpersuasive of error.
Appellant’s argument that the prior art teachings are not combinable
because the Examiner “fails to address predictability” (Appeal Br. 12) is not
persuasive because it does not address the Examiner’s rationale in support of
the rejection. For example, the Examiner explains that a skilled artisan
would have combined Matsunaga with Ofuji for multiple reasons. Final Act.
4–5 (listing these reasons with citations to the references). The Examiner
further provides reasons that a skilled artisan would have combined
Matsunaga and Kim as well as Matsunaga, Ofuji, and Kim. See id. at 6–7
(listing these reasons with citations to the references). Appellant’s argument
does not address these findings. See Appeal Br. 10–16. Moreover, it is well-
established that “[o]bviousness does not require absolute predictability of
success. . . . For obviousness under § 103, all that is required is a reasonable
expectation of success.” In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir.
1988). Appellant’s argument lacks evidence as to why a skilled artisan
would consider the art of combining various structures of a semiconductor
unpredictable and is unpersuasive of error. See Appeal Br. 12, 13–14
(arguing only that Kim’s teaching “cast[s] doubt as to the predictability of
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further unguided manipulation of layer materials, dimensions, formation
techniques, etc. on threshold voltage stability” without addressing the
teachings of Matsunaga and Ofuji).
Appellant’s argument that the Examiner reversibly erred in
extrapolating the voltage data in Kim is unpersuasive because it does not
structurally distinguish the prior art. See Appeal Br. 12–13. As noted supra,
“[w]here . . . the claimed and prior art products are identical or substantially
identical . . . the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.” Best, 562 F.2d at 1254. Moreover, “[i]t is elementary that
the mere recitation of a newly discovered function or property, inherently
possessed by things in the prior art, does not cause a claim drawn to those
things to distinguish over the prior art.” Id. “[A]pparatus claims cover what a
device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb
Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Appellant’s argument based on
the assertion that Kim does not teach or suggest the recited threshold voltage
is therefore unpersuasive of error. Appellant’s argument is unpersuasive also
because it attacks the references individually – namely, Kim – without
addressing Matsunaga and Ofuji. See id. “Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.” In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986) (“Merck”) (citing In re Keller, 642 F.2d
413, 425 (CCPA 1981) (“Keller”)).
Moreover, Appellant argues that “a comparison between FIG. 5A of
Kim using one material (i.e., AIO) and FIG. 58 using a different material
(i.e., SiO) appear to show a large variation in threshold voltage change”
(Appeal Br. 13) but does not provide evidence showing that such purported
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“large variation” is solely based on the material used. Appellant also does
not provide evidence that a skilled artisan would have considered the
variation unpredictable. See In re O’Farrell, 853 F.2d at 903–04. Moreover,
Appellant’s argument that Kim shows “a large variation in threshold voltage
change” under certain conditions also does not show that the recited
threshold voltage is unexpected. Appeal Br. 13.
Appellant’s arguments that the “Examiner’s Expanded Theories
Appear Flawed and Not Germane” (Appeal Br. 14–15) are not persuasive of
error for the same reason that the arguments do not structurally distinguish
the prior art. Appellant’s arguments regarding the Examiner’s discussion of
best mode (Appeal Br. 15–16) are likewise unpersuasive of error for lack of
structural distinction.
Lastly, Appellant argues that the Examiner reversibly erred in finding
that the recited threshold voltage characteristic is inherent. Appeal Br. 16.
Appellant, however, does not elaborate on why the Examiner erred, nor does
Appellant present evidence showing that the combined prior art structure—
despite the structural identity—would have exhibited a different threshold
voltage characteristic. See Best, 562 F.2d 1254 (“Where . . . the claimed and
prior art products are identical or substantially identical . . . the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product.”). Such a
blanket assertion that inherency has not been established is not persuasive of
error.

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Application 12/880,286
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CONCLUSION
The Examiner’s rejection is affirmed.
More specifically,
DECISION SUMMARY
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
9, 12, 13,
16, 24, 25
103(a) Matsunaga, Ofuji,
Kim
9, 12, 13,
16, 24, 25

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED