Ex Parte Bedell et alDownload PDFPatent Trial and Appeal BoardJan 28, 201412472943 (P.T.A.B. Jan. 28, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/472,943 05/27/2009 Stephen W. Bedell YOR920030340US4 8632 48062 7590 01/29/2014 RYAN, MASON & LEWIS, LLP 1175 Post Road East 2nd Floor Westport, CT 06880 EXAMINER SLUTSKER, JULIA ART UNIT PAPER NUMBER 2891 MAIL DATE DELIVERY MODE 01/29/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STEPHEN W. BEDELL, KEITH EDWARD FOGEL, BRUCE KENNETH FURMAN, SAMPATH PURUSHOTHAMAN, DEVENDRA K. SADANA, and ANNA WANDA TOPOL ____________ Appeal 2012-000659 Application 12/472,943 Technology Center 2800 ____________ Before PETER F. KRATZ, JEFFREY T. SMITH, and LINDA M. GAUDETTE, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-000659 Application 12/472,943 2 Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1 twice rejecting claims 2-7 and 9-12 under 35 U.S.C. §102(b) as anticipated by Sakaguchi (US 6,306,729 B1, issued Oct. 23, 2001), and claim 8 under 35 U.S.C. §103(a) as unpatentable over Sakaguchi, further in view of Henley (US 2003/0113983A1, published Jun. 19, 2003).2 We have jurisdiction under 35 U.S.C. § 6(b).3 We AFFIRM. The invention relates to a layer transfer structure used in the fabrication of semiconductor devices. (See Spec.4 1:11-12.) Appellants’ arguments in support of patentability as to all claims are based on limitations found in claim 11, the sole independent claim on appeal, which is reproduced below from the Claims Appendix to the Appeal Brief: 11. A layer transfer structure comprising: a carrier substrate, wherein said carrier substrate further comprises: a porous region with a tuned porosity in combination with an implanted species positioned therein defining a separation plane in the carrier substrate; a regrown epitaxial layer, wherein said regrown epitaxial layer has a microscopic structure corresponding to a thermal treatment of a portion of said porous region; and 1 Second Office Action mailed Oct. 19, 2010. 2 Appeal Brief filed Apr. 22, 2011 (“App. Br.”). 3 The Application involved in the present appeal is a continuation of SN 12/180,827, filed Jul. 28, 2008, which is the subject of Appeal 2011-010897. A decision in Appeal 2011-010897 is rendered concurrently with the present decision by the above-identified Board Panel. SN 12/180,827 is a continuation of SN 11/840,389, now abandoned, which is a division of 10/685,636, abandoned Mar. 26, 2009. SN 10/685,636 was the subject of Appeal 2008-005836, wherein the above-identified Board Panel affirmed the Examiner’s decision rejecting the claims under 35 U.S.C. §103(a). 4 Specification filed Jul. 28, 2008. Appeal 2012-000659 Application 12/472,943 3 a device layer having a predefined target resistivity and a microscopic structure corresponding to a thermal treatment of a portion of said porous region. We have fully considered the arguments advanced by Appellants, but are not convinced of error in the Examiner’s finding of anticipation and conclusion of obviousness for the reasons expressed in the Answer (see, e.g., Ans.5 7-9). We add the following. Appellants argue the Examiner reversibly erred in finding Sakaguchi’s layer transfer structure includes a device layer which inherently possesses “a microscopic structure” and a “predefined target resistivity” as recited in appealed claim 11. (App. Br. 4-5; Reply Br.6 2-5). According to Appellants, the claimed device layer possesses a microscopic structure and a predefined target resistivity which patentably differ from the structure and resistivity of Sakaguchi’s device layer by virtue of the difference in processes used to form the regrown epitaxial layer, i.e., “thermal treatment of a portion of [a] porous region” of the carrier substrate. (App. Br. 4-5; Reply Br. 4.) Appellants argue, more specifically, that Sakaguchi’s process differs from Appellants’ process because Sakaguchi does not directly form an epitaxial layer from the porous silicon layer, but thermally treats the porous silicon layer to first form a thin oxide film and close the pores. (App. Br. 4.) We find the evidence of record is insufficient to support a finding that the process used by Appellants would result in a regrown epitaxial layer which patentably differs from the regrown epitaxial layer produced by Sakaguchi. Appellants’ thermal treatment, as described in the Specification, is said to seal “the top layer of the porous structure . . . , allowing for the creation of an epitaxial layer” (Spec. 12:3-6). Appellants have not explained how this treatment differs 5 Examiner’s Answer mailed Aug. 5, 2011. 6 Reply Brief filed Sep. 19, 2011. Appeal 2012-000659 Application 12/472,943 4 from Sakaguchi’s thermal treatment wherein the porous Si layer is preliminarily heat-treated to close the pores and form a thin oxide film prior to epitaxial growth (see Sakaguchi col. 16, ll. 6-18). Therefore, the Examiner had a reasonable basis for finding Sakaguchi’s device layer would inherently possess the same predefined target resistivity and microscopic structure as Appellants’ claimed device layer. Where the Examiner establishes a reasonable assertion of inherency and thereby evinces that a claimed process appears to be identical to a process disclosed by the prior art and/or that the products claimed by the applicant and disclosed in the prior art appear to be the same, the burden is properly shifted to the applicant to show that they are not. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254-56 (CCPA 1977). Appellants have not met this burden. CONCLUSION For the reasons expressed in the Answer and above, the Examiner’s decision to reject claims 2-7 and 9-12 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)(1). 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