Ex Parte Doris et al

Board of Patent Appeals and Interferences

Jan 14, 2011

10695748 (B.P.A.I. Jan. 14, 2011)

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.
10/695,748 10/30/2003 Bruce B. Doris FIS920030264
(00750483AA)
6189
30743 7590 01/14/2011
WHITHAM, CURTIS & CHRISTOFFERSON & COOK, P.C.
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190
EXAMINER
CAO, PHAT X
ART UNIT PAPER NUMBER
2814
MAIL DATE DELIVERY MODE
01/14/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRUCE B. DORIS, HAINING YANG, and HUILONG ZHU
____________

Appeal 2009-010874
Application 10/695,748
Technology Center 2800
____________

Before MARC S. HOFF, ELENI MANTIS MERCADER, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-010874
Application 10/695,748

2
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 10-12 and 16-19. See Appeal Brief 10. We have jurisdiction under
35 U.S.C. § 6(b) (2002). We affirm.

Exemplary Claim
10. A structure that adjusts carrier mobility in CMOS
transistors comprising:
a substrate,
a first transistor having a gate dielectric, gate electrode, and
source, drain, and gate regions, formed on said substrate,
a second transistor having a gate dielectric, gate electrode, and
source, drain, and gate regions, formed on said substrate,
a first film providing tensile stress at least at the channel of said
first transistor,
a second film providing compressive stress at least at the
channel of said second transistor, a portion of said second film
extending in the same region of said substrate as a portion of said first
film, and
a shear force isolation layer separating said first film and said
second film and said tensile and compressive stress therein in at least
one area.

Rejection on Appeal
Claims 10-12 and 16-19 stand rejected under 35 U.S.C. § 102(e) as
being unpatentable over U.S. Publication 2003/0181005 A1 Hachimine et al.
(“Hachimine”).

Appeal 2009-010874
Application 10/695,748

3
Appellants’ Contentions
At pages 13-17 of the Appeal Brief, Appellants contend that the
Examiner erred in rejecting claims 10-12 and 16-19 under 35 U.S.C. §
102(e) as being unpatentable over Hachimine.
A. Appellants contend that
paragraph [0214] of Hachimine et al. clearly states that the
effect of one stressed film overlapping an oppositely stressed
film will reduce the effect of the latter unless the overlapping
film is removed; thus clearly indicating that layer 15 is not
expected to function as a shear force isolation film or even
recognizing that such a film or even such a structure could be
produced. In regard to the embodiment of Figure 31
(embodiment 6) films 14b and 15 are left in place but the
different tensile and compressive stresses are achieved by the
stress from film 14b exceeding the stress derived from film 14a
which can only be achieved if film 15 is not a shear force
isolation film since the stress from film 14b must necessarily be
transmitted through both films 15 and 14a to the substrate, as
explicitly noted in paragraph [0279].
(Appeal Brief 13).
B. Appellants contend that
The Examiner does not identify any new grounds of
rejection in the Examiner’s Answer. However, it is respectfully
submitted that the errors in the ground of rejection asserted in
the final action in this application are particularly evident from
the Examiner’s assertions and response to Appellants[’]
arguments as stated in the Examiner’s Answer.
(Reply Brief 1).

PRINCIPLES OF LAW
“[T]he PTO gives claims their ‘broadest reasonable interpretation.’”
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
Appeal 2009-010874
Application 10/695,748

4
F.3d 1367, 1372 (Fed. Cir. 2000)). “Moreover, limitations are not to be read
into the claims from the specification.” In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631
(Fed. Cir. 1987).

Issue on Appeal
Did the Examiner err in rejecting claims 10-12 and 16-19 as being
unpatentable because the reference fails to disclose the claim limitation at
issue?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
We disagree with Appellants’ conclusion. We adopt as our own (1)
the findings and reasons set forth by the Examiner in the action from which
the 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.
Appellants argue that Hachimine does not indicate that layer 15 is a
shear force isolation layer and that the Examiner has improperly relied upon
inherency (Appeal Brief 13-14). Appellants are correct in that Hachimine
does not refer to layer 15 as a shear force isolation layer. The Examiner
Appeal 2009-010874
Application 10/695,748

5
acknowledges that fact; however, as the Examiner correctly points out,
Appellants’ Specification is silent in regards to layer 120 (see Figure 6;
Specification 12) being a shear force isolation layer. See Answer 5. The
Examiner argues that, since the materials are the same for the claimed layer
as Hachimine’s layer, without any specifics or details provided by
Appellants’ Specification, Hachimine’s layer is a shear isolation force layer,
just as Appellants’ layer is (Answer 5).
In the Reply Brief, Appellants argue that the Examiner has made a
new grounds of rejection based upon the Examiner’s reference to paragraph
[0170] of Hachimine (Reply Brief 1-2).
Further, Appellants rely on the first full paragraph on page 11 of the
Specification and the first full paragraph on page 12 of the Specification
(Reply Brief 3) to support their position that layer 120 (or 12) is a shear
force isolation layer; however, there is no support for either of Appellants’
positions. Appellants’ Specification is not specific about the shear isolation
layer, and there is nothing within Appellants’ Specification that would lead
one of ordinary skill in the art to give any credence to Appellants’ arguments
that their shear isolation layer is different from Hachimine’s layer, since they
are formed from the same material.

CONCLUSION
The Examiner has not erred in rejecting claims 10-12 and 16-19 as
being unpatentable.

DECISION
The Examiner’s rejection of claims 10-12 and 16-19 is affirmed.
Appeal 2009-010874
Application 10/695,748

6
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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WHITHAM, CURTIS & CHRISTOFFERSON & COOK, P.C.
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190