Ex Parte Cheng et al

Patent Trial and Appeal Board

Feb 15, 2013

11259295 (P.T.A.B. Feb. 15, 2013)

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.
11/259,295 10/26/2005 Kangguo Cheng ROC920050218US1 4189
7590 02/15/2013
James R. Nock
IBM Corporation
Intellectual Property Law Dept. 917
3605 Hwy. 52 North
Rochester, MN 55901
EXAMINER
KIM, SUN M
ART UNIT PAPER NUMBER
2813
MAIL DATE DELIVERY MODE
02/15/2013 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 KANGGUO CHENG, HERBERT L. HO
and JACK A. MANDELMAN
____________________

Appeal 2010-008741
Application 11/259,295
Technology Center 2800
____________________

Before ALLEN R. MacDONALD, HUNG H. BUI and
LYNNE E. PETTIGREW, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008741
Application 11/259,295

2
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
15-20. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claim 15 under appeal reads as follows (emphasis added):
15. A method, comprising;
(a) providing a substrate including a microelectronic device;
and
(b) forming a void in the substrate around a portion of the
microelectronic device so that the void reduces a parasitic leakage
between the microelectronic device and the bulk substrate.
Rejections
1. The Examiner rejected claims 15-17, 19, and 20 under
35 U.S.C. § 102(b) as being anticipated by Mandelman (US 6,437,401 B1).
1

2. The Examiner rejected dependent claim 18 as being
unpatentable under 35 U.S.C. § 103(a) over Mandelman.
2

3. The Examiner rejected dependent claims 15-17, 19, and 20 as
being unpatentable under 35 U.S.C. § 103(a) over Schindler (US
7,033,926).
3

1
Separate patentability is not argued for claims 16, 17, 19, and 20. Except
for our ultimate decision, these claims are not discussed further herein.
2
The patentability of dependent claim 18 under 103(a) is not separately
argued from that of the independent claims rejected under 102(b). Except for
our ultimate decision, this claim is not discussed further herein.
3
Appellants’ Appeal Brief is silent as to this rejection and does not request
its review as required by 37 C.F.R. § 41.37(c)(1)(vi). Therefore appeal of
this rejection was waived and we affirm this rejection as a matter of form.
Appeal 2010-008741
Application 11/259,295

3
4. The Examiner rejected dependent claim 18 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Schindler
and Lur (US 2004/0097013 A1).
4

Appellants’ Contentions
1. Appellants contend that the Examiner erred in finding that
Mandelman anticipates claim 15 because “the Examiner’s burden of
establishing that conductive material 19 is a microelectronic device has not
been met.” (App. Br. 5).
2. At pages 3-5 of the Appeal Brief, Appellants also contend that
Mandelman does not support anticipation of claim 15 because:
Mandelman fails to disclose, for example, forming a void
in a substrate around a portion of a microelectronic device
so that the void reduces a parasitic leakage between the
microelectronic device and the bulk substrate.
(App. Br. 3) (emphasis added).

Issues on Appeal
1. Whether the Examiner has erred in rejecting claim 15 as being
anticipated because Mandelman’s item 19 is not a microelectronic device?
2. Whether the Examiner has erred in rejecting claim 15 as being
anticipated because the Examiner is required to prove that Mandelman
possesses the claimed functional limitation (“reduces parasitic leakage”)
asserted by Appellants to be critical for establishing novelty in the claimed
subject matter, (i.e., because the Examiner does not possess the authority to

4
Appellants’ Appeal Brief is silent as to this rejection and does not request
its review as required by 37 C.F.R. § 41.37(c)(1)(vi). Therefore appeal of
this rejection was waived, and we affirm this rejection as a matter of form.
Appeal 2010-008741
Application 11/259,295

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require Appellants to prove that the prior art product does not possess the
characteristics relied on)?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions (App. Br. and Reply Br.) that the Examiner has erred in rejecting
the claims based on Mandelman.
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief. We
concur with the conclusion reached by the Examiner.
As to Appellants’ above contention 1, we disagree for the reasons set
forth by the Examiner in the discussion of the storage capacitor node 19.
(See particularly Ans. 6-7).
As to Appellants’ above contention 2, we disagree. We conclude that
the Examiner has set forth a reasonable basis to believe that Mandelman’s
structure possesses the claimed functional limitation (“reduces parasitic
leakage”). (See particularly Ans. 7-8). Contrary to Appellants’ arguments,
the Examiner has presented a prima facie case for both anticipation and
obviousness. Also contrary to Appellants’ arguments, it is well established
that the burden of going forward has shifted to Appellants. Where the
claimed and prior art products are identical or substantially identical in
structure or composition, or are produced by identical or substantially
identical processes, a prima facie case of either anticipation or obviousness
has been established. In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Appeal 2010-008741
Application 11/259,295

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“When the PTO shows a sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990).
However, the prima facie case can be rebutted by evidence showing that the
prior art product does not necessarily possess the characteristics of the
claimed product. Best, 562 F.2d at 1255; see also Titanium Metals Corp. v.
Banner, 778 F.2d 775 (Fed. Cir. 1985). Appellants have presented no
evidence that Mandelman’s structure, which is identical to the claimed
structure, fails to possess the claimed properties.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 15-17, 19, and 20
as being anticipated under 35 U.S.C. § 102(b) over Mandelman.
(2) The Examiner has not erred in rejecting claim 18 as being
unpatentable under 35 U.S.C. § 103(a) over Mandelman.
(3) The Examiner has not erred in rejecting claims 15-17, 19, and 20
as being unpatentable under 35 U.S.C. § 103(a) over Schindler.
(4) The Examiner has not erred in rejecting claim 18 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Schindler
and Lur.
(5) Claims 15-20 are not patentable.

DECISION
The Examiner’s rejections of claims 15-20 are affirmed.
Appeal 2010-008741
Application 11/259,295

6

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)(iv).

AFFIRMED

ELD