Ex Parte Ahn et al

Board of Patent Appeals and Interferences

Dec 8, 2006

10012677 (B.P.A.I. Dec. 8, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KIE Y. AHN and LEONARD FORBES
__________

Appeal No. 2006-2922
Application No. 10/012,677
__________

ON BRIEF
__________

Before JERRY SMITH, BARRY, and BLANKENSHIP, Administrative Patent
Judges.

JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s rejection of claims 16-22. Claims 1-15 and 23-29 have been
cancelled.
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Application No. 10/012,677

THE INVENTION
The disclosed invention pertains to methods of forming silicon-doped
aluminum oxide, and methods of forming transistors and memory devices.
Representative claim 16 is reproduced as follows:
16. A method of forming a transistor, comprising:
• forming an insulating layer of silicon-doped porous aluminum oxide
over a substrate, the forming the insulating layer of silicon-doped
porous aluminum oxide comprising:
o evaporating aluminum oxide from a single crystal sapphire;
o evaporating silicon monoxide from a source comprising silicon
monoxide;
o forming a vapor mixture comprising the evaporated aluminum
oxide and evaporated silicon monoxide in a reaction chamber to
form a mixture; and
o depositing of at least some of the evaporated aluminum oxide
and silicon from the evaporated silicon monoxide on the
substrate to form Al2O3 doped with silicon atoms on the
substrate, an amount of silicon within the silicon-doped
aluminum oxide being controlled by controlling the rate of the
evaporating silicon monoxide, the forming the mixture and the
depositing being conducted without flowing O2 into the chamber;
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o forming a patterned conductive material over the insulating
layer of silicon-doped porous aluminum oxide; and
o forming a pair of conductive source/drain regions by implanting
dopant into the substrate through the silicon-doped porous
aluminum oxide, the pair of source/drain regions being spaced
from one another by the patterned conductive material; the
conductive material defining a transistor gate between the
source/drain regions.

THE REFERENCES
The examiner relies on the following references:
Fujisada JP 60-167352 Aug. 30, 1985
Lee et al. (Lee) 5,923,056 July 13, 1999
Suh 6,093,612 July 25, 2000

• Vossen et al. (Vossen), “Thin Film Processess II”, Academic Press
Inc., Boston, 1991, pages 80-81, 108-110, 113-115, 188, and 200.

• Wolf, Stanley et al (Wolf-1), “Silicon Processing For The VLSI Era Vol.
1: Process Technology”, Lattice Press, Sunset Beach Ca., 1986,
pages 5 and 323.

• Wolf, Stanley (Wolf-2), “Silicon Processing For The VLSI Era Vol. 2:
Process Integration”, Lattice Press, Sunset Beach Ca., 1990, pages
332, 333 and 354-356.
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Application No. 10/012,677

The examiner has made of record the following extrinsic evidence to
support the examiner’s contention that sapphire is a single crystal by
definition:
Wikipedia web page at: (http://en.wikipedia.org/wiki/Sapphire)
Kinoshita et al. (Kinoshita) 6,809,010 Oct. 26, 2004
(filed Feb. 28, 1997)

THE REJECTIONS
The following rejections are on appeal before us:
1. Claims 16-18 and 20-22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the teachings of Lee in view of Vossen, and
further in view of Fujisada, Wolf-1, and Wolf-2.
2. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Lee in view of Vossen, and further in
view of Fujisada, Wolf-1, Wolf-2, and Suh.
Rather than repeat the arguments of appellants or the examiner, we
make reference to the briefs and the answer for the respective details
thereof.
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Application No. 10/012,677

OPINION

We have carefully considered the subject matter on appeal, the
rejections advanced by the examiner and the evidence of obviousness relied
upon by the examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our decision, the
appellants’ arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in rebuttal set forth in
the examiner’s answer. Only those arguments actually made by appellants
have been considered in this decision. Arguments which appellants could
have made but chose not to make in the briefs have not been considered
and are deemed to be waived. See 37 C.F.R.§ 41.37(c)(1)(vii)(2004). See
also In re Watts, 354 F.3d 1362, 1368, 69 USPQ2d 1453, 1458 (Fed. Cir.
2004).
It is our view, after consideration of the record before us, that the
evidence relied upon by the examiner does not support the examiner’s
rejection of claims 16-22. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
examiner to establish a factual basis to support the legal conclusion of
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obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17,
148 USPQ 459, 467 (1966). The examiner must articulate reasons for the
examiner’s decision. In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430,
1434 (Fed. Cir. 2002). In particular, the examiner must show that there is a
teaching, motivation, or suggestion of a motivation to combine references
relied on as evidence of obviousness. Id. at 1343, 61 USPQ2d at 1433-34.
The examiner cannot simply reach conclusions based on the examiner’s own
understanding or experience - or on his or her assessment of what would be
basic knowledge or common sense. Rather, the examiner must point to
some concrete evidence in the record in support of these findings. In re
Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001). Thus
the examiner must not only assure that the requisite findings are made,
based on evidence of record, but must also explain the reasoning by which
the findings are deemed to support the examiner’s conclusion. However, a
suggestion, teaching, or motivation to combine the relevant prior art
teachings does not have to be found explicitly in the prior art, as the
teaching, motivation, or suggestion may be implicit from the prior art as a
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Application No. 10/012,677

whole, rather than expressly stated in the references. The test for an
implicit showing is what the combined teachings, knowledge of one of
ordinary skill in the art, and the nature of the problem to be solved as a
whole would have suggested to those of ordinary skill in the art. In re Kahn,
441 F.3d 977, 987-88, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) citing In re
Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000).
See also In re Thrift, 298 F. 3d 1357, 1363, 63 USPQ2d 2002, 2008 (Fed.
Cir. 2002). These showings by the examiner are an essential part of
complying with the burden of presenting a prima facie case of obviousness.
See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the applicant to
overcome the prima facie case with argument and/or evidence. Obviousness
is then determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See Id.; In re Hedges, 783 F.2d 1038,
1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976).

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We consider first the examiner’s rejection of claims 16-18 and 20-22
as being unpatentable over the teachings of Lee in view of Vossen, and
further in view of Fujisada, Wolf-1, and Wolf-2. Since appellants’ arguments
with respect to this rejection have treated these claims as a single group
which stand or fall together, we will consider independent claim 16 as the
representative claim for this rejection. See 37 C.F.R. § 41.37 (c)(1)(vii)
(2004).
Appellants argue that the combination of prior art cited by the
examiner fails to teach or suggest each and every element in representative
claim 16. Specifically, appellants assert that the combination proffered by
the examiner has no teaching of a two-source evaporative system that
utilizes aluminum oxide and silicon monoxide [brief, page 10]. Appellants
further assert that the recited limitation of “forming the mixture and the
depositing being conducted without flowing O2 into the chamber” is not
disclosed by the prior art [brief, pages 11 and 12]. Appellants also assert
that the prior art of record fails to disclose or suggest controlling the amount
of silicon present by controlling the evaporation rate of silicon monoxide
[brief, page 12]. Appellants argue that the examiner has improperly
formulated the rejection by impermissibly relying upon hindsight [brief, page
11].
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The examiner disagrees [answer, page 12]. The examiner essentially
argues that a two-source evaporative system that utilizes aluminum oxide
and silicon monoxide would have been obvious because “one skilled in the
art would recognize that any listed source could be combined with any other
listed source to form a compatible compound” [answer, page 13, ¶4, cont’d
page 14, ¶1]. The examiner further argues that one of ordinary skill in the
art would recognize that “if there is sufficient oxygen in the chamber (for
any compound formation) additional oxygen would not be supplied” [answer,
page 15, ¶2]. With respect to the recited limitation of controlling the
amount of silicon present by controlling the evaporation rate of silicon
monoxide, the examiner asserts that Vossen’s disclosure is “directed toward
each and every material listed within the tables as well as any non-listed
material that can be used as a target” [answer, page 16, ¶2].
In the reply brief, appellants note that Vossen’s disclosure in Table II
(pages 108 and 109) does not disclose any two-source system that utilizes
an aluminum oxide-comprising source or forms an aluminum oxide-
comprising film [reply brief, page 2, ¶3].
At the outset, we note that to reach a proper conclusion under §103,
the examiner, as finder of fact, must step backward in time and into the
mind of a person of ordinary skill in the art at a time when the invention was
unknown, and just before it was made. In light of all the evidence, we
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review the specific factual determinations of the examiner to ascertain
whether the examiner has convincingly established that the claimed
invention as a whole would have been obvious at the time of the invention to
a person of ordinary skill in the art. When claim elements are found in more
than one prior art reference, the fact finder must determine “whether a
person of ordinary skill in the art, possessed with the understandings and
knowledge reflected in the prior art, and motivated by the general problem
facing the inventor, would have been led to make the combination recited in
the claims.” In re Kahn 441 F.3d at 988, 78 USPQ2d at 1337. With respect
to the role of the examiner as finder of fact, the Court of Appeals for the
Federal Circuit has stated: “the examiner bears the initial burden, on review
of the prior art or on any other ground, of presenting a prima facie case of
unpatentability.” In re Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. The
Court of Appeals for the Federal Circuit has also noted: “[w]hat the prior art
teaches, whether it teaches away from the claimed invention, and whether it
motivates a combination of teachings from different references are questions
of fact.” In re Fulton, 391 F.3d 1195, 1199-1200, 73 USPQ2d 1141, 1144
(Fed. Cir. 2004) (internal citations omitted).
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After carefully considering all of the evidence before us, we agree with
appellants that the combination proffered by the examiner fails to fairly
teach or suggest a two-source evaporative system that utilizes aluminum
oxide and silicon monoxide, as claimed. We acknowledge that Vossen
discloses co-evaporation using multiple sources [p. 110]. However, we find
no evidence of record to support the examiner’s assertion that the “choice of
SiO and Al2O3 sources are well known” and therefore would have been an
obvious “design choice” to an artisan [see answer, page 6].
We further agree with appellants that the recited limitation of “forming
the mixture … without flowing O2 into the chamber” is not fairly disclosed nor
suggested by the prior art. In contrast, we find that Lee teaches away from
the instant claimed invention by explicitly disclosing the formation of an
aluminum oxide film in an argon/oxygen atmosphere [col. 5, lines 59-61].
“A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, … would be led in a direction divergent from the
path that was taken by the applicant.” Tec Air, Inc. v. Denso Mfg. Mich.
Inc., 192 F.3d 1353, 1360, 52 USPQ2d 1294, 1298 (Fed. Cir. 1999). We
note that our reviewing court has reaffirmed that “[a] prima facie case of
obviousness can be rebutted if the applicant … can show ‘that the art in any
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Application No. 10/012,677

material respect taught away’ from the claimed invention.” In re Geisler,
116 F.3d 1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997) (quoting In
re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974)).
Lastly, we agree with appellants that the prior art relied on by the
examiner on this record fails to disclose or suggest controlling the amount
of silicon within the silicon-doped aluminum oxide by controlling the
evaporation rate of silicon monoxide, as claimed.
For at least the aforementioned reasons, we agree with appellants’
that the combination of references relied on by the examiner fails to fairly
teach or suggest all the limitations of representative claim 16. Therefore,
we agree with appellants’ that the examiner has failed to meet his/her
burden of presenting a prima facie case of obviousness. Accordingly, we will
reverse the examiner’s obviousness rejection of representative claim 16 as
being unpatentable over Lee in view of Vossen, and further in view of
Fujisada, Wolf-1, and Wolf-2. Because we have reversed the examiner’s
rejection of single independent claim 16, we will not sustain the examiner’s
rejection of any of the dependent claims 17-22 under appeal.
In summary, we will not sustain the examiner’s rejection of any of the
claims under appeal. Therefore, the decision of the examiner rejecting
claims 16-22 is reversed.

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Application No. 10/012,677

REVERSED

)
Jerry Smith )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Lance Leonard Barry )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Howard B. Blankenship )
Administrative Patent Judge )
)

JS/ce
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Application No. 10/012,677

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