Ex Parte Bedell et al

Patent Trial and Appeal Board

Jan 28, 2014

12472943 (P.T.A.B. Jan. 28, 2014)

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).

AFFIRMED

kmm