Ex Parte Bedell et al

Patent Trial and Appeal Board

Aug 31, 2016

12713560 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121713,560 02/26/2010 Stephen W. Bedell
133964 7590 09/02/2016
HOFFMAN WARNICK LLC
540 Broadway
4th Floor
ALBANY, NY 12207
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
FIS920100005US1 4962
EXAMINER
GRAYBILL, DAVIDE
ART UNIT PAPER NUMBER
2894
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
PTOCommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN W. BEDELL, KEITH E. FOGEL,
PAUL A. LAURO, DEVENDRA SADAN A,
and DA VOOD SHAHRJERDI
Appeal2014-003427
Application 12/713 ,5 60
Technology Center 2800
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner's decision finally rejecting claims 1, 3, 5, 6, 8-12, and 21-23
1 Our decision refers to Appellants' Specification filed February 26, 2010,
the Examiner's Final Office Action delivered April 10, 2013, Appellants'
Appeal Brief (Appeal Br.) filed August 28, 2013, the Examiner's Answer
(Ans.) delivered November 15, 2013, and Appellants' Reply Brief (Reply
Br.) filed January 15, 2014.
2 According to Appellants, the real party in interest is International Business
Machines Corporation. Appeal Br. 1.
Appeal2014-003427
Application 12/713,560
under 35 U.S.C. § 103(a) as unpatentable over Mathew3 and Sato,4 alone or
further combined with Henley,5 Wesley,6 Ravkin,7 and Zhang.8'9 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to semiconductor substrate fabrication using
stress-induced substrate spalling. Spec. i-f 2.
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief, is illustrative of the subject matter on appeal. The limitations at issue
are italicized.
1. A method for spalling a substrate layer from an ingot of a
semiconductor substrate, the method comprising:
forming a seed layer directly on a surface of the ingot of
the semiconductor substrate;
forming an adhesion layer, the adhesion layer comprising
nickel; directly on the seed layer;
annealing the adhesion layer after forming the adhesion
layer;
after annealing the adhesion layer, forming a metal layer,
the metal layer comprising nickel and having a tensile stress,
directly on the adhesion layer;
3 US 2009/0280635 Al, published November 12, 2009.
4 US 5,668,060, issued September 16, 1997.
5 US 2007/0037323 Al, published February 15, 2007.
6 US 2,274,112, issued February 24, 1942.
7 US 2006/0260932 Al, published November 23, 2006.
8 US 2008/0210563 Al, published September 4, 2008.
9 Although the Examiner states that every ground of rejection set forth in the
Final Office Action of April 10, 2013 is maintained (Ans. 2), we note that
the Examiner withdrew "[a]ll rejections and objections except the rejections
over the prior art" in the Advisory Action of June 27, 2013. Accordingly,
only these § 103 rejections are before us on appeal.
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Application 12/713,560
forming a fracture in the ingot by the tensile stress in the
metal layer such that the substrate layer is located in the ingot
above the fracture, and a remaining portion of the ingot is located
below the fracture; and
removing the substrate layer from the remaining portion
of the ingot at the fracture.
The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a):
A. Claims 1, 3, 5, 6, 8, 9, 11, and 12 as unpatentable over Mathew
and Sato;
B. Claim 10 as unpatentable over Mathew and Sato, and further in
view of Henley;
C. Claim 21 as unpatentable over Mathew and Sato, and further in
view of Wesley alone, or alternatively combined with Ravkin; and
D. Claims 22 and 23 as unpatentable over Mathew and Sato, and
further in view of Zhang.
With regard to Rejection A, Appellants argue sole independent claim
1 and dependent claim 12 separately, but do not otherwise argue the
remaining dependent claims. As such, claims 3, 5, 6, 8, 9, and 11 stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(iv)(2013). In addition, Appellants
do not raise substantively different arguments with regard to Rejections B,
C, and D, instead arguing that Henley, Wesley, Ravkin, and Zhang do not
remedy deficiencies asserted in the Examiner's proposed combination of
Mathew and Sato in their arguments against claim 1. Accordingly, no new
issues are presented for claims 10 and 21-23.
We sustain the above rejections based on the findings of fact,
conclusions of law, and rebuttals to arguments expressed by the Examiner in
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Application 12/713,560
the Final Office Action and the Answer. The following comments are added
for emphasis.
Claim 1
The Examiner finds Mathew discloses a method for spalling a
substrate layer from an ingot of a semiconductor substrate comprising
forming a seed layer directly on a surface of the ingot, forming an adhesion
layer comprising nickel directly on the seed layer, forming a metal layer
comprising nickel directly on the adhesion layer, forming a fracture in the
ingot such that a substrate layer in the ingot is located above the fracture
with the remaining portion of the ingot located below the fracture, and
removing the substrate layer from the remaining portion of the ingot. Final
Act. 14--15. The Examiner further finds Mathew's process includes
annealing the adhesion layer and the fracture formation step inherently is
caused by tensile stress in the metal layer. Id. at 14. In support of this
inherency finding, the Examiner notes that the formation of Mathew's metal
layer is via an electroplating process substantially identical to Appellants',
which Appellants teach causes the stressed metal layer to form on the
adhesion layer. Id. at 20-21. With regard to the particular layer materials,
the Examiner finds Mathew discloses these materials, in any combination.
Id. at 16-17. 10
10 We note, although finding that Mathew discloses forming the layers
directly on each other, the Examiner determines that it would have been an
obvious matter of design choice to have formed the layers directly on each
other because Appellants fail to teach that such an arrangement is for any
particular unobvious purpose, produces an unexpected result, or is otherwise
critical. Id. at 17. The Examiner also determines that direct formation of the
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Application 12/713,560
The Examiner acknowledges that Mathew does not disclose forming
the metal layer after annealing the adhesion layer. Final Act. 22-23.
However, the Examiner finds Sato discloses forming a metal layer after
annealing an adhesion layer. Id. at 22. The Examiner concludes it would
have been obvious to anneal Mathew's adhesion layer prior to forming the
metal layer to enhance the adhesion of the metal layer to the adhesion layer
as taught by Sato. Id.
Appellants contend that the Examiner's proposed combination of
Mathew and Sato fails to teach or suggest each and every element of the
claimed invention. Appeal Br. 3. In particular, Appellants argue that
Mathew's annealing step is not performed until after both the metal
containing film 206, 1006 and the conductive film 308, 1008, and not after
the metal containing film is formed but before the conductive film is formed.
Id. at 4. Appellants further argue that Sato's anneal or heat treatment is for
enhancing bonding between silicon wafers, and is not applicable to
annealing of a nickel adhesion layer before formation of a nickel metal layer
on the nickel adhesion layer. 11 Id. at 4--5.
layers on each other would have been obvious to try, as there are only two
readily identified, predictable alternatives, layers formed directly on each
other and layers not formed directly on each other. Id. at 18. Even further,
the Examiner finds, based on Mathew's teachings, that one of ordinary skill
in the art would at once envisage the alternative of directly forming the
layers on each other. Id. For reasons explained infra, we need not address
these determinations.
11 The Examiner notes Appellants' argument includes reliance on and
citation to a reference not relied on in the rejections before us on appeal.
Ans. 3--4 (Appeal Br. 5:2-15 apparently refers to Sato, US 5,854,123, issued
December 29, 1998). Appellants do not dispute this fact, nor otherwise
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We do not find Appellants' arguments persuasive of reversible error
in the Examiner's rejection of claim 1. The rejection does not rely on
Mathew for teaching of the annealing step before the formation of the metal
layer, but instead relies on Sato for this feature. Sato teaches annealing
promotes the growth of nickel grains in a base layer containing nickel to
enhance the adhesion of a subsequent layer containing nickel to the base
layer. Sato 4:66-5: 11. Thus, contrary to Appellants' argument, Sato's
teaching is applicable to annealing of a nickel adhesion layer before
formation of a nickel metal layer on the nickel adhesion layer.
With regard to the Examiner's finding that Mathew's metal layer
would inherently have a tensile stress that forms a fracture in the ingot,
Appellants urge that the separation of the substrate layer from the ingot of
Mathew occurs because of the diffusion of the separation-enhancing species
along with stress within the ingot induced by annealing the substrate after
formation of the metal layer. Appeal Br. 5. Because the separation of
Mathew's substrate layer may be formed by any of these mechanisms "in the
absence of any tensile stress in in [sic] a metal layer," Appellants assert
Mathew does not inherently teach tensile stress in the metal layer that is
configured to cause a fracture in the ingot. Id. Appellants also contend that
the tensile stress in the metal layer is not an inherent result of electroplating
as taught in Mathew. Reply Br. 4. According to Appellants, "there are
many different methods of electroplating, and [] not all methods of
electroplating are substantially identical." Id. Appellants assert the
explain the relevance of their citation to this second Sato patent. We,
therefore, need not further address this aspect of Appellants' argument.
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Specification describes an example of an electroplating process that may be
used to form a metal layer having a tensile stress, features of which were
included in dependent claim 21. 12 Id. Appellants argue that Mathew's
electroplating process is not substantially identical to the described and
claimed electroplating process for forming a metal layer having a tensile
stress. Id.
We also do not find these arguments persuasive of reversible error.
"[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. Additionally, where the Patent
Office has reason to believe that a functional limitation asserted
to be critical for establishing novelty in the claimed subject
matter may, in fact, be an inherent characteristic of the prior art,
it possesses the authority to require the applicant to prove that
the subject matter shown to be in the prior art does not possess
the characteristic relied on."
In re Best, 562 F.2d 1252, 1254--1255 (CCPA 1977) (quoting In re
Swinehart, 439 F.2d 210, 212-13 (CCPA 1971)).
Here, the Examiner finds the fracture formation step inherently is
caused by tensile stress in the metal layer, noting that the formation of
Mathew's metal layer is via an electroplating process substantially identical
12 It has not escaped our attention that although Appellants mention
dependent claim 21 in their argument against claim 1, Appellants do not
argue claim 21 separately. See Appeal Br. 6; Reply Br. 5. Instead,
Appellants argue that neither Wesley nor Ravkin remedy the deficiencies in
the combination of Mathew and Sato applied to claim 1. As such,
Appellants fail to identify reversible error in the Examiner's findings that
Wesley alone, or combined with Ravkin, suggests the electroplating process
as recited in claim 21 to one of ordinary skill in the art.
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to Appellants', which Appellants teach causes the stressed metal layer to
form on the adhesion layer. Final Act. 14; 20-21. Appellants disclose
"[ e ]lectroplating causes stressed metal layer 501 to form on adhesion layer
301 .... The tensile stress contained in metal layer 501 may be greater than
about 100 megapascals (MPa) in some embodiments." Spec. i-f 20.
Appellants further disclose that "[t]he stressed metal layer may be formed by
electroplating or electroless plating." Id. at i-f 16. Finally, Appellants
disclose that "[ c ]ontrolled spalling may be made to become spontaneous
spalling upon heating of the stressed metal 501." Id. at i-f 22. Mathew
similarly teaches that the metal layer 308 may be formed by electroplating or
electro less plating. Mathew i-f 30. Thus, the Examiner's finding that
Mathew's metal layer 308 is inherently tensile stressed is supported by a
preponderance of the evidence in the record.
Appellants disclose the conditions of one electroplating process for
forming a metal layer having tensile stress (Spec. ,-r 19; claim 21 ). However,
Appellants neither indicate that these conditions are critical to forming a
tensile stressed metal layer or that generally known electroplating processes
will not successfully form stressed metal layers. Also, although Appellants
assert that not all electroplating processes are substantially identical,
Appellants fail to assert that all electroplating processes will not form tensile
stressed metal layers. Moreover, even assuming arguendo that Appellants
are asserting that not all electroplating processes will form tensile stressed
metal layers, Appellants fail to direct our attention to any evidentiary
support for such an assertion. As such, Appellants have not shown
reversible error in the Examiner's finding that Mathew's metal layer 308 is
inherently tensile stressed.
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Application 12/713,560
In addition, although Mathew teaches that spalling or fracture may be
enhanced or facilitated using separation-enhancing species, and optionally, a
wedge, wire or saw, Appellants have not identified reversible error in the
Examiner's finding that Mathew's fracture is inherently formed by the
tensile stress in the metal layer. In each case, stress must be applied within
the ingot to cause fracture and formation of the substrate layer. As the
Examiner finds, Mathew's metal layer 308 is inherently tensile stressed.
Mathew teaches that, during heating or cooling of the ingot, stress develops
near the separation-enhancing species and either causes fracture or makes
fracture easier. Mathew i-f 24. Appellants similarly disclose the use of
heating to cause spontaneous fracture. Spec. i-f 22. While Mathew's
separation-enhancing species, and optional wedge, wire or saw, may
facilitate fracture formation, the inherent tensile stress in Mathew's metal
layer 308 would also necessarily contribute to fracture formation in the same
manner as occurs in Appellants; invention. Thus, a preponderance of the
evidence supports the Examiner's finding that Mathew's fracture is
inherently formed by the tensile stress in the metal layer 308.
Accordingly, we will sustain the Examiner's obviousness rejection of
claim 1.
Claim 12
Claim 12 depends from claim 1, and further requires that the tensile
stress in the metal layer is greater than about 100 megapascals. The
Examiner finds, as indicated above, that Mathew's metal layer 308 is
inherently tensile stressed. Final Act. 20. The Examiner further finds that
this tensile stress "is inherently greater than 100 megapascals" id. at 19.
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Appellants focus primarily on the Examiner's inherency finding that
Mathew's metal layer 308 is tensile stressed, rather than the specific further
inherency finding that this tensile stress is greater than 100 megapascals.
Appeal Br. 6; Reply Br. 4. Indeed, Appellants' argument that Mathew
cannot teach or suggest a tensile stress greater than 100 megapascals relies
on Appellants' prior argument than Mathew's metal layer 308 does not
inherently have tensile stress, which we did not find persuasive for the
reasons supra.
Accordingly, we will sustain the Examiner's obviousness rejection of
claim 12.
DECISION
Upon consideration of the record, and for the reasons given above, in
the Final Office Action, and the Examiner's Answer, the decision of the
Examiner rejecting claims 1, 3, 5, 6, 8-12, and 21-'23 under 35 U.S.C.
§ 103(a) as unpatentable over Mathew and Song, alone or further combined
with Henley, Wesley, Ravkin, and Zhang is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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