Ex Parte Curatola et alDownload PDFPatent Trial and Appeal BoardFeb 12, 201612514940 (P.T.A.B. Feb. 12, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/514,940 05/14/2009 65913 7590 02/17/2016 Intellectual Property and Licensing NXPB.V. 411 East Plumeria Drive, MS41 SAN JOSE, CA 95134 FIRST NAMED INVENTOR Gilberto Curatola 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. 00 6349 us 5069 EXAMINER HUBER, ROBERT T ART UNIT PAPER NUMBER 2892 NOTIFICATION DATE DELIVERY MODE 02/17/2016 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): ip.department.us@nxp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GILBERTO CURATOLA, MARK VAN DAL, and JAN SONSKY Appeal2014-003804 Application 12/514,940 Technology Center 2800 Before JEFFREYS. SMITH, HUNG H. BUI, and KEVIN C. TROCK, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek our review under 35 U.S.C. § 134(a) of the Examiner's Final Office Action rejecting claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 The real party in interest is NXP, B.V. App. Br. 2. 2 Our decision refers to Appellants' Appeal Brief filed September 19, 2013 ("App. Br."); Reply Brief filed February 10, 2014 ("Reply Br."); Examiner's Answer mailed December 10, 2013 ("Ans."); Final Office Action mailed March 19, 2013 ("Final Act."); and original Specification filed May 14, 2009 ("Spec."). Appeal2014-003804 Application 12/514,940 STATEMENT OF THE CASE Appellants' Invention Appellants' invention relates to an alternative structure for an impact- ionization MOSFET device in which an insulated gate electrode is used to control an electric field in a semiconductor intermediate region between two or more highly doped source/drain regions. Spec. 1 :6-9; Abstract. Claim 1 is independent and describes Appellants' invention, as reproduced below with disputed limitations in italics: 1. A semiconductor device comprising: a first source/drain region having a first doping level; a second source/ drain region having a second doping level and of opposite dopant type to the first source/drain reg10n; the first and second source/drain regions being laterally separated by an intermediate region having a doping level less than either of the first and second doping levels; a gate electrode electrically insulated from, and disposed over, the intermediate region, the first and second source/drain regions being laterally aligned with the gate electrode; the entire portion of the first source/drain region that forms a boundary with the intermediate region being separated vertically from the top of the intermediate region. App. Br. 11 (Claims App'x.). Examiner's Rejections (1) Claims 1, 2, 8, and 9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kodama (U.S. Publication No. 2007/0114580 Al; May 24, 2007) and Gopalakrishnan (U.S. Publication No. 2006/0113612 Al; June 1, 2006). Final Act. 2-5. 2 Appeal2014-003804 Application 12/514,940 (2) Claim 10 stands rejected under 35 U.S.C. § 101 as claiming the same invention as that of claim 1 of prior US. Patent No. 8,227,841 (July 24, 2012) (double patenting rejection). Final Act. 5---6. (3) Claims 1-9 stand rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1 and 2-8 of prior U.S. Patent No. 8,227,841. Final Act. 6. ANALYSIS § 103(a) Rejection of Claims 1, 2, 8, and 9 based on Kodama and Gopalakrishnan With respect to independent claim 1, the Examiner finds Kodama discloses a semiconductor device, as shown in Figure 1, equipped with all the claimed elements including: a first source/ drain region (104 ); a second source/drain region (102); the first and second source/drain regions (104, 102) being laterally separated by an intermediate region (as indicated at 109); a gate electrode (comprising "floating gate" 106 & "control gate" 108) electrically insulated from, and disposed over, the intermediate region (see Fig. 1, paragraph [0028]), the first and second source/drain regions (104, 102) being laterally aligned with the gate electrode (comprising "floating gate" 106 & "control gate" 108); the entire portion of the first source/ drain region ( 104) that forms a boundary with the intermediate region (as indicated at 109) being separated vertically from the top (top surface) of the intermediate region (as indicated at 109) (see Fig. 1), wherein the portion of the first source/drain region (104) that forms a boundary with the intermediate region (as indicated at 109) is separated vertically from the lowest part (bottom part) of the second source/drain region (102) (see Fig. 1). 3 Appeal2014-003804 Application 12/514,940 Final Act. 2-3 (citing Kodama if 28; Fig. 1 ). Figure 1 of Kodama is reproduced below with additional markings, inserted in red, for illustration. 108 107 102 104 101 Kodama' s Figure 1 shows Appellants' claimed "semiconductor device." As shown in Kodama's Figure 1, the semiconductor device includes a source region (104), a drain region (102), an intermediate region between the source region (104) and the drain region (102), and a gate electrode (106- 108) electrically insulated and disposed over the intermediate region, wherein the source and drain regions (104, 102) are laterally aligned with the gate electrode (106-108), and the entire portion of the source/drain region (102 or 104) that forms a boundary with the intermediate region is separated vertically from the top (top surface) of the intermediate region. The Examiner acknowledges Kodama does not expressly teach the different dopants and doping levels of the source/ drain regions and the intermediate region between the source/drain regions, but relies on Gopalakrishnan for providing this teaching in order to support the 4 Appeal2014-003804 Application 12/514,940 conclusion of obviousness. Id. at 3--4 (citing Gopalakrishnan iii! 6, 14, 47, 59, Fig. IA). Appellants do not dispute the Examiner's factual findings regarding Gopalakrishnan. Nor do Appellants dispute the Examiner's rationale for combining Kodama and Gopalakrishnan. Appellants even acknowledge Kodama teaches "a gate that is [laterally] aligned with source and drain regions." App. Br. 5. Nevertheless, Appellants present several arguments against Kodama, including: (1) no motivation to combine (App. Br. 4--7; Reply Br. 5---6); (2) hypothetical combination of Kodama and Gopalakrishnan is not enabled (App. Br. 7); (3) the cited references fail to provide the alleged functionality (App. Br. 8-9; Reply Br. 4); and (4) the cited references teach away from the combination (App. Br. 9-10). However, all these arguments are predicated upon what Appellants incorrectly characterize as: (1) the failure of the Examiner's proposed combination to achieve the cited functionality; and (2) the Examiner's failure to explain "as to how (or why) one skilled in the art would be motivated to completely rearrange the teachings of the '612 [Kodama] reference" and "as to how the new arrangement would achieve the same functionality as the arrangement taught by the '612 [Kodama] reference." App. Br. 5---6, 9. We find Appellants' arguments misplaced and not commensurate with the scope of Appellants' claim 1. For example, Appellants' claim 1 does not recite any functionality associated with "a laterally aligned gate" as alleged by Appellants. Instead, claim 1 simply recites, inter alia: "a gate electrode electrically insulated from, and disposed over, the intermediate region, the first and second source/drain regions being laterally aligned with the gate 5 Appeal2014-003804 Application 12/514,940 electrode." This feature is expressly disclosed by Kodama's Figure 1, as discussed above. As such, we find the Examiner's responses to Appellants' arguments are supported by a preponderance of evidence and, therefore, adopt the Examiner's findings and explanations provided therein. Ans. 4--9; see also Kodama i-f 9 (describing the functionality of a gate electrode that is offset from the source and drain regions). For the reasons set forth above, we sustain the Examiner's obviousness rejection of claim 1 based on Kodama and Gopalakrishnan, as well as its dependent claims 2, 8, and 9, which Appellants do not argue separately. Statutory Type of Double Patenting Rejection of Claim 10 based on Claim 1 of U.S. Patent No. 8,227,841 ('"841 Patent") At the outset, we note both the instant application and the '841 patent are filed by a common inventor, Mr. Gilberto Curatola, with different inventive entities. In addition, the instant application is assigned to NXP, B.V. (see Real/Frame 022686/0067), while the '841 patent is assigned to Taiwan Semiconductor Manufacturing Company Ltd. (See Real/Frame 027593/0039). The instant application is the national entry of PCT application PCT/IB07 /54607, and has an effective date of November 13, 2007 that is earlier than both US filing date (April 28, 2009) and priority date (April 28, 2008) of the '841 patent. App. Br. 3--4; see also '841 Patent, (22), (30). The '841 Patent was issued on July 24, 2012, and its claims 1-8 and 10-18 were disclaimed, via a Request for Statutory Disclaimer under 6 Appeal2014-003804 Application 12/514,940 37 CFR § 1.321 filed on January 29, 2013. Certificate of Correction was issued on April 16, 2013 with a disclaimer relative to claims 1-8 and 10-18 of the '841 patent (see attached exhibit). The Examiner finds claim 10 recites the same invention (i.e., identical subject matter) as that of claim 1 of the '841 patent. Final Act. 5. Appellants argue the double patenting rejection of claim 10 is improper because: (1) the later filed case (i.e., application 12/431,670 issued as US Patent No. 8,227,841) was issued prior to the current, earlier filed instant application; and (2) the statutory disclaimer was submitted and accepted in the '841 patent, and the effect of submitting such a statutory disclaimer is that "the patent is treated as though the disclaimed claims never existed" and, as such, that the disclaimed subject matter should be treated as if it never existed. App. Br. 3--4 (citing In re Yamazaki, 702 F.3d 1327, 1332 (Fed. Cir. 2012)). In addition, Appellants also argue: such issued patent claims can be disclaimed in a parent application, and then resurrected in a continuation (-in-part) application. The conflict between the issued patent claims and the continuation (-in-part) application claims is readily resolved by the connection of a terminal disclaimer. Reply Br. 3. We disagree. First, we agree with the Examiner that claim 10 recites the same invention (i.e., identical subject matter) as that of claim 1 of the '841 patent. As such, a terminal disclaimer cannot be filed to obviate a statutory double patent rejection. See MPEP § 804.02; see also In re Swett, 451F.2d631(CCPA1971). Second, we recognize the instant application has an earlier filing date relative to the '841 patent. Nevertheless, the doctrine of double patent 7 Appeal2014-003804 Application 12/514,940 rejection is not based on the filing date of the instant application or the '841 patent. Instead, the doctrine of double patenting seeks to prevent the unjustified extension of patent exclusivity beyond the term of a patent. The public policy behind this doctrine is that: The public should ... be able to act on the assumption that upon the expiration of the patent it will be free to use not only the invention claimed in the patent but also any modifications or variants thereof which would have been obvious to those of ordinary skill in the art at the time the invention was made, taking into account the skill of the art and prior art other than the invention claimed in the issued patent. In re Zickendraht, 319 F.2d 225, 232 (CCPA 1963) (Rich, J., concurring) (emphasis added). As correctly recognized by the Examiner, once a statutory disclaimer is filed, the patentee has dedicated those claims to the public under 35 U.S.C. § 253. See Altoona Publix Theatres, Inc. v. American Tri-Ergon Corp.; 294 U.S. 477; 492 (1935) ("Upon the filing of the disclaimers; the original claims were withdrawn from the protection of the patent laws, and the public was entitled to manufacture and use the device originally claimed as freely as though it had been abandoned."). Therefore, by filing a statutory disclaimer, as the patentee of the '841 patent filed on January 29, 2013 via a Request for Statutory Disclaimer under 37 CPR§ 1.321, the patentee has relinquished any right to exclude others from the subject matter of claims 1-8 and 10-18 of the '841 patent. The public is entitled to manufacture and use the semiconductor device originally claimed. Where claims have once been formally disclaimed by patentee, the patentee is estopped from setting up those claims in another application. As such, contrary to Appellants' arguments, the disclaimed subject matter of the '841 8 Appeal2014-003804 Application 12/514,940 patent cannot be recaptured or reclaimed in subsequent, parallel, or earlier filed applications including the instant application. Third, Appellants' reliance on Yamazaki (702 F.3d at 1332) is misplaced. In Yamazaki, the Federal Circuit affirmed the Board's rejection of reissue application No. 10/045,902 ("the Reissue Application") for lack of error correctable under 35 U.S.C. § 251 because reissue proceedings cannot be used to withdraw a terminal disclaimer from an issued patent. For the same reasons discussed, we also sustain the Examiner's double patenting rejection of claim 10 based on claim 1 of the '841 patent. Non-Statutory Obviousness-Type Double Patenting Rejection of Claims 1-9 based on Claims 1--8 of U.S. Patent No. 8,227,841 ('"841 Patent") With respect to claims 1-9, the Examiner finds these claims are not patentably distinct from claims 1-8 of the '841 patent. Final Act. 6. The Examiner also advises Appellants that a terminal disclaimer can be filed to obviate such a non-statutory obviousness-type double patenting rejection. Id. Appellants, however, do not file a terminal disclaimer;3 instead, Appellants reiterate the same arguments presented against the statutory type of double patenting rejection of claim 10. We are not persuaded for the same reasons discussed supra. 3 We recognize Appellants are not the assignee of the '841 patent and, as such, cannot file a terminal disclaimer to obviate the non-statutory obviousness-type double patenting rejection. 9 Appeal2014-003804 Application 12/514,940 CONCLUSION On the record before us, we conclude Appellants have not demonstrated the Examiner erred in rejecting: (1) claims 1, 2, 8, and 9 under 35 U.S.C. § 103(a) as being unpatentable over Kodama and Gopalakrishnan; (2) claim 10 under 35 U.S.C. § 101 as claiming the same invention as that of claim 1 of the prior '841 patent; and (3) claims 1-9 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1 and 2-8 of the prior '841 patent. DECISION As such, we AFFIRM the Examiner's final rejection of claims 1-10. 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 )(iv). AFFIRMED 10 Disclaimer 8.227.841 B2 - Gilberto Curatola. Korbek-Lo. Bel!!:ium. SELF-ALIGNED IMPACT-IONIZATION FIELD EFFECT TRANSISTOR. Patent dated July 24, 201'1. Disclaimer filed January 29, 2013, by the assignee, Taiwan Semiconductor Manufacturing, Ltd. Hereby enters this disclaimer lo claims 1-8 and 10-18 of said patent. (Official Gazette, April 16, 2013) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE In re application of: Gilberto Curatola Application No.: 12/431,670 Patent No.: 8,227,841 Filing Date: April 28, 2009 Issue Date: July 24, 2012 § Attorney Docket No.: 2009-0172 I 24061.1283 § § Group Art Unit: 2829 § § Examiner: Tran, Thanh Y. § § Confirmation No.: 5615 § For: Self-Aligned Impact-Ionization Field Effect Transistor Commissioner for Patents P. 0. Box 1450 Alexandria, VA22313-1450 REQUEST FOR STATUTORY DISCLAIMER UNDER 37CFR1.321 Taiwan Semiconductor Manufacturing, Ltd (TSMC), the owner of 100 percent interest in the above patent, disclaims patented claims 1-8 and 10-18 of the above patent. The undersigned is an Attorney of Record for the patent, and hereby certifies that TSMC is the sole owner of the entire right, title and interest in the patent by virtue of an assignment recorded July 25, 2012, reel 027593, frame 0039. The Commissioner is hereby authorized to charge the fee in the amount of $160.00 under 3 7 CFR 1.20( d) required by the filing of this paper. The Commissioner is hereby authorized to charge any additional fees to Haynes and Boone, LLP' s Deposit Account No. 08-1394. Dated: I - .). t; · ~()I~ HA YNES AND BOONE, LLP IP Section 2323 Victory Ave, Suite 700 Dallas, TX 75219 Customer No. 42717 Telephone: 972-739-8635 Respectfully submitted, /Lf//)(/A{/ David M. 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