Baozhen Li et al.

Patent Trials and Appeals Board

Mar 31, 2021

2020003276 (P.T.A.B. Mar. 31, 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.
13/234,205 09/16/2011 Baozhen Li FIS920110135US1
(163-438)
2331
49267 7590 03/31/2021
Tutunjian & Bitetto, P.C.
401 Broadhollow Road
Suite 402
Melville, NY 11747
EXAMINER
SMITH, BRADLEY
ART UNIT PAPER NUMBER
2817
NOTIFICATION DATE DELIVERY MODE
03/31/2021 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):
docketing@tb-iplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BAOZHEN LI, YAN ZUN LI, KEITH KWONG HON WONG,
and CHIH-CHAO YANG
____________

Appeal 2020-003276
Application 13/234,205
Technology Center 2800
____________

Before MONTÉ T. SQUIRE, BRIAN D. RANGE, and
DEBRA L. DENNETT, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to finally reject claims 1–7 and 13.3 We have jurisdiction under
35 U.S.C. § 6(b).

1 This Decision refers to the Specification filed Sept. 16, 2011 (“Spec.”);
Final Office Action dated June 18, 2018 (“Final Act.”); Advisory Action
dated Sept. 27, 2018 (“Advisory Act.”); Appeal Brief filed Mar. 12, 2019, as
amended Apr. 30, 2019 (“Appeal Br.”); Examiner’s Answer dated Jan. 30,
2020 (“Ans.”); and Reply Brief filed Mar. 27, 2020 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies International Business Machines as the
real party in interest. Appeal Br. 3.
3 The Examiner’s § 103 rejection of claims 8–12 and 14 is withdrawn at
page 3 of the Answer, and claims 15–23 are identified as withdrawn at page
1 of the Final Office Action.
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We REVERSE.
CLAIMED SUBJECT MATTER
The invention relates to a circuit apparatus that includes an electrical
fuse device, a first circuit element, and a second circuit element. Spec. ¶¶ 1,
3; Abstract. Claim 1 illustrates the subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief (key
disputed claim language italicized and bolded):
1. A circuit apparatus comprising:
a fuse including a first contact of tungsten that has a first
electromigration resistance, a second contact of tungsten that has
a second electromigration resistance and a metal line of copper,
which is coupled to the first contact and to the second contact,
that has a third electromigration resistance that is lower than the
second electromigration resistance, a first total contact area of
the first contact to the metal line being substantially equal to a
second total contact area of the second contact to the metal line;
a first circuit element coupled to the first contact; and
a second circuit element coupled to the second contact,
wherein the fuse is configured to conduct a programming current
from the first contact to the second contact through the metal line
and wherein the programming current causes the metal line to
electromigrate away from the second contact at an
electromigration opening portion to electrically isolate the
second circuit element from the first circuit element, wherein a
cathode element provides the first contact and is in direct contact
with a first portion of the metal line, and an anode element is the
second contact in direct contact with a second portion of the
metal line, wherein the metal line has a uniform width extending
entirely from the first portion of the metal line to the second
portion of the metal line, and the cathode element and the anode
element have a width that is less than the uniform width of the
metal line.

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Application 13/234,205

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REFERENCES
The Examiner relies on the following prior art reference as evidence in
rejecting the claims on appeal:
Name Reference Date
Schlarmann US 2010/0252908 A1 Oct. 7, 2010
Lin et al. (“Lin”) US 2013/0063175 A1 Mar. 14, 2013

REJECTION
On appeal, the Examiner maintains (Ans. 3) the following rejection: claims
1–7 and 13 rejected under 35 U.S.C. § 103(a) as being unpatentable over Lin in
view of Schlarmann.4 Final Act. 2.

OPINION
The Examiner determines that the combination of Lin and Schlarmann
suggests a circuit apparatus satisfying the limitations of claim 1 and would have
rendered the claim obvious. Final Act. 2–4. Regarding “the cathode element and
the anode element have a width that is less than the uniform width of the metal
line,” the Examiner relies on Figure 2 of Schlarmann for disclosing that limitation.
Id. at 5. The Examiner finds that, based on the structure Schlarmann depicts in
Figure 2, Schlarmann discloses cathode element 14 and anode element 24 have a
width that is less than the uniform width of conductive line 20. Id.
The Examiner further finds:
One of ordinary skill in the art could have combined the elements
of Lin and Schlarmann as claimed by known methods (the anode
element have a width that is less than the uniform width of the
conductive line), and that in combination of Lin and Schlarmann,

4 As we previously note above, the Examiner has withdrawn the rejection as to
claims 8–12 and 14. Ans. 3.
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Application 13/234,205

4
each element merely performs the same function as it does
separately (the contacts would still deliver current).
Id. at 6. The Examiner concludes it would have been obvious to one of ordinary
skill in the art to make a smaller contact because the smaller contact width would
use less material and therefore save material. Id.; see also Ans. 10 (stating
“tungsten that forms the contact is not free and has a monetary value” and “[t]he
price of tungsten that forms the contact is about $30,000 per metric ton in 2018”).
Appellant argues the Examiner’s rejection of claim 1 should be reversed
because the cited art does not teach or suggest a “the cathode element and the
anode element have a width that is less than the uniform width of the metal line”
and the Examiner has not provided reasoning sufficient to support a conclusion of
obviousness with respect to that limitation of the claim. Appeal Br. 15, 18; Reply
Br. 2–3. Thus, Appellant contends “the rational[e] provided by the Examiner does
not meet the standard of rational sufficient to support a finding of a prima facie
case of obviousness.” Appeal Br. 18 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398 (2007)). Rather, Appellant argues the Examiner’s rationale “includes no
factual basis and appears to be nothing more than an unsupported conclusion.” Id.
We agree with Appellant’s arguments because, on this appeal record, we are
not persuaded the Examiner has established by a preponderance of the evidence
that Schlarmann teaches or suggests “the cathode element and the anode element
have a width that is less than the uniform width of the metal line” and it would
have been obvious to one of ordinary skill in the art to have combined the
teachings of Lin and Schlarmann to have arrived at that limitation. In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992) (holding the examiner bears the initial
burden of establishing a prima facie case of obviousness).
Absent more, the Examiner’s finding that Schlarmann discloses the
limitation “the cathode element and the anode element have a width that is less
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than the uniform width of the metal line” is insufficient to sustain the Examiner’s
rejection because it is based on Figure 2 of Schlarmann being drawn to scale and
there is no indication in the reference or elsewhere in the record that the figure is
drawn to scale. Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956
(Fed. Cir. 2000) (“[I]t is well established that patent drawings do not define the
precise proportions of the elements and may not be relied on to show particular
sizes if the specification is completely silent on the issue.”). The Examiner’s
finding essentially requires evaluating the structure Figure 2 of Schlarmann depicts
for precise dimensional attributes and relationships with respect to the cathode,
anode, and conductive line elements the figure illustrates, where the reference is
devoid of any indication that the figure is drawn to scale. Indeed, our reviewing
courts have long since cautioned that “arguments based on drawings not explicitly
made to scale . . . are unavailing.” Nystrom v. Trex Co., 424 F.3d 1136, 1149 (Fed.
Cir. 2005) (citations omitted); see also In re Wright, 569 F.2d 1124, 1127 (CCPA
1977) (“Absent any written description in the specification of quantitative values,
arguments based on measurement of a drawing are of little value.”).
The Examiner’s conclusion that it would have been obvious to one of
ordinary skill in the art to make a smaller contact because the smaller contact width
would use less material and therefore save material (Final Act. 6) is an equally
insufficient basis to sustain the Examiner’s rejection because it is conclusory and
the Examiner does not provide a persuasive explanation or direct us to persuasive
evidence in the record sufficient to support it. In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (holding that obviousness rejections “cannot be sustained by mere
conclusory statements”).
We do not find persuasive the Examiner’s assertions that “tungsten that
forms the contact is not free and has a monetary value” and the “price of tungsten
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that forms the contact is about $30,000 per metric ton in 2018” (Ans. 10) for the
well-stated reasons Appellant provides at pages 2–3 of the Reply Brief. In
particular, we agree with Appellant that because semiconductor devices, such as
the claimed device, are micro- and nano- scale in size and formed using deposition
methods, simply making the device smaller would not necessarily result in a costs
savings from the use of less material, as the Examiner contends. See, e.g., Spec.
¶ 28 (describing elements having, for example, a height of “approximately 30–80
nm”). Rather, as Appellant explains (Reply Br. 3), because of the specific
geometries, thicknesses, and dimensions of these devices and the need for further
processing, including the use of subtractive methods to remove and shape the
deposited material, the processing to reduce a microstructure in size would be more
costly than the material costs.
Contrary to what the Examiner’s rejection seems to imply, the fact that it
may have been technically possible for Lin’s integrated circuit device to have been
modified to include the cathode element and the anode element having a width that
is less than the uniform width of the metal line, without more, does not necessarily
mean or suggest it would have been obvious to one of ordinary skill in the art to do
so in view of Schlarmann’s disclosure. See Belden Inc. v. Berk-Tek LLC, 805 F.3d
1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not
only could have made but would have been motivated to make the combinations or
modifications of prior art to arrive at the claimed invention.”) (emphasis in
original).
Thus, on this appeal record, we are not persuaded the portions of
Schlarmann the Examiner cites and relies upon on the rejection discloses or
suggests “the cathode element and the anode element have a width that is less than
the uniform width of the metal line” in the manner claimed or that it would have
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been obvious to one of ordinary skill in the art to have arrive at such limitation for
the reasons the Examiner provides.
We, therefore, do not sustain the Examiner’s rejection of claim 1. Because
claims 2–7 depend from claim 1 and claim 13 includes the same disputed
limitation we discuss above as claim 1, we also do not sustain the Examiner’s
rejection of those claims for the same reasons as claim 1.
Accordingly, we reverse the Examiner’s rejection of claims 1–7 and 13
under 35 U.S.C. § 103(a) as obvious over Lin and Schlarmann.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 13 103(a) Lin, Schlarmann 1–7, 13

REVERSED