Ex Parte Du

Patent Trial and Appeal Board

Dec 15, 2016

13765080 (P.T.A.B. Dec. 15, 2016)

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.
13/765,080 02/12/2013 Yang Du 122173/1173-072 4288
115309 7590 12/19/2016
W&T/Onalrnmm
EXAMINER
106 Pinedale Springs Way
Cary, NC27511
PHAM, THANH V
ART UNIT PAPER NUMBER
2899
NOTIFICATION DATE DELIVERY MODE
12/19/2016 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):
patents @ wt-ip.com
us-docketing@qualcomm.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YANG DU1
Appeal 2015-007049
Application 13/765,080
Technology Center 2800
Before MARKNAGUMO, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—11, 21, and 23. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to three-dimensional integrated
circuits (“3DIC”). E.g., Spec. 12; Claim 1. Claim 1 is reproduced below
from page 11 (Claims Appendix) of the Appeal Brief:
1 According to the Appellant, the real party in interest is Qualcomm
Incorporated. Br. 2.
Appeal 2015-007049
Application 13/765,080
1. A three-dimensional (3D) integrated circuit (IC) (3DIC)
comprising:
a substrate having a first tier of electronic components thereon;
a donor wafer portion having a second tier of electronic
components thereon, wherein the donor wafer portion comprises
a polished oxidized portion that is substantially free of ions
introduced to the donor wafer portion during an ion cutting
procedure and wherein the donor wafer portion is substantially
free of surface deformation and without thermal diffusion of the
ions; and
an oxide bond joining the substrate to the donor wafer portion.
ANALYSIS
Claims 1—11, 21, and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the Appellant’s admitted prior art (“AAPA”) in
combination with Guarini et al. (US 2004/0241958 Al, published Dec. 2,
2004).2 The Appellant presents separate arguments for limitations that
appear in claims 1 and 23. We limit our discussion to those claims. The
remaining claims on appeal will stand or fall with claim 1.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejection.
Accordingly, we affirm the rejection for reasons set forth below, in the Final
2 In the Examiner’s Answer, the Examiner withdraws a rejection of claim 23
under 35 U.S.C. § 112,12. Ans. 2. Additionally, we note that both the
Final Action and the Answer list claim 22 as being subject to the § 103
rejection. See Final Act. 3; Ans. 2. Claim 22, however, has been canceled
and is not before us in this appeal. See, e.g., Claims dated Nov. 11, 2014;
Br. 12 (Claims Appendix; listing claim 22 as canceled).
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Application 13/765,080
Action, and in the Examiner’s Answer. See generally Final Act. 3—6; Ans.
2-3.
Claim 1.
The Examiner finds that the APA describes a 3DIC comprising each
limitation of claim 1 except that the 3DIC of the APA does not comprise “a
polished oxidized portion that is substantially free of ions,” as required by
claim 1. Final Act. 3^4. The Examiner finds that Guarini teaches:
the steps of oxidation and CMP “to reduce the root mean square
(RMS) surface roughness” “to reduce the concentration of OH
groups on the surface of the low temperature oxide layer” “to
prevent any degradation in the electrical properties of the device
layer” and “the exposed low temperature oxide surface is then
polished by chemical mechanical polishing (CMP), if required,
and cleaned.”
Advisory Act. dated Nov. 26, 2014, at 3 (quoting portions of Guarini || 33—
37). The Examiner concludes that “[i]t would have been obvious ... to
provide applicant’s admitted prior art with the cleaved surface being CMP
and/or oxidation and cleaning to improve the quality of the formed device as
taught by Guarini.” Final Act. 4.
The Appellant does not persuasively dispute the Examiner’s findings
concerning the APA, Guarini, or motivation to combine. See generally Br.
6—8. Instead, the Appellant argues that Guarini’s process requires oxidation
followed by polishing, while the claimed 3DIC is formed by polishing
followed by oxidation, resulting “in structurally different end products.” Id.
at 7. For support that claim 1 requires polishing followed by oxidation, the
Appellant appears to rely on the fact that claim 1 recites “a polished oxidized
portion.” See id.
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Application 13/765,080
The Appellant’s argument does not persuade us of reversible error in
the rejection. As the Examiner explains, and contrary to certain statements
in the Appellant’s Brief, see, e.g., id. (“[T]he process of Guarini is the
opposite of the claimed process(emphasis added)), claim 1 is directed to
an integrated circuit; it is not directed to a process. See Ans. 2. The
Appellant identifies nothing persuasive in claim 1 or in the Specification that
would indicate that polishing must precede oxidation for an integrated
circuit to fall within the scope of claim 1.
We recognize that claim 1 recites “a polished oxidized portion.” See
Br. 7. However, under the broadest reasonable interpretation of that term
consistent with the Specification, we do not understand the term to require
that polishing must take place before oxidation. Rather, we interpret the
term as requiring that the donor wafer comprises a portion that is both
polished and oxidized. The Appellant provides no persuasive explanation as
to why claim 1 should be interpreted to require polishing before oxidation.
See id. If we were to adopt the Appellant’s position, it appears that claim 1
and claim 213 would be coterminous in scope. See Seachange Int'l, Inc. v.
C-COR, Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005) (“[Tjhere is still a
3 Claim 21 (unlike claim 1) includes a process limitation in that it specifies
that polishing occurs prior to oxidizing. The Appellant’s argument
concerning claim 21 is that it “recite[s] similar elements [to claim 1] and [is]
not obvious for at least the same reasons [as claim 1].” Br. 8. We do not
consider that to be a separate argument for the patentability of claim 21. Cf.
In re Baxter TravenolLabs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not
the function of this court to examine the claims in greater detail than argued
by an appellant. . . .”). In any event, for reasons explained in this decision,
the Appellant does not persuasively identify a structural distinction between
the claimed 3DIC and the 3DIC of the combined prior art.
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Application 13/765,080
presumption that two independent claims have different scope when
different words or phrases are used in those claims.”).
The Appellant does not dispute that the Examiner’s proposed
combination results in a donor wafer portion that is both polished and
oxidized. See Guarini || 34—37.
The Appellant argues that, “[t]o the extent that the process elements
within the claim result in a structurally different end product than one that is
oxidized and then polished as taught in Guarini, the end structure is different
and entitled to patentable weight.” Br. 7 (quotation marks omitted).
However, the Appellant fails to identify any “process element” within claim
1 that would result in any particular structure that would distinguish over the
applied prior art, and we do not discern any such process element. Claim 1
simply recites a “donor wafer portion compris[ing] a polished oxidized
portion.” As discussed above, the Appellant provides no persuasive
evidence or reasoning as to why that term implies that polishing must
precede oxidation. Nor does the Appellant persuasively explain what
structural difference, if any, would arise necessarily from the different order
of steps.
Concerning a potential structural difference between the 3DIC of
claim 1 and that of the combined prior art, the Appellant argues that “there is
no evidence that the end of product of Guarini ‘is substantially free of ions
introduced to the donor wafer portion during an ion cutting procedure’ as
recited in claim 1.” Br. 7.
We are not persuaded by that argument. The Examiner’s rationale
does not rely on Guarini alone. See In re Keller, 642 F.2d 413, 426 (CCPA
1981) (“[0]ne cannot show non-obviousness by attacking references
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individually where, as here, the rejections are based on combinations of
references.”). As discussed above, the APA in view of Guarini renders
obvious a donor wafer portion that is polished and oxidized, as required by
claim 1. Guarini teaches polishing to reduce surface roughness and
annealing a “low temperature oxide layer” specifically “to reduce the
concentration of OH groups,” which the Examiner finds constitute ions. See
Guarini || 34, 37; Ans. 3. The “Background” section of the Appellant’s
Specification indicates that “excess ions” in electronic circuitry was a known
problem. Spec. 17 (“[Ejxcess ions can interfere with operation of
transistors.”). Moreover, Guarini expressly teaches the use of ozone as an
oxidizing agent. See Guarini 136. The Appellant’s Specification teaches
the use of ozone as a preferred oxidizing agent and states that “ozone . . . [is]
particularly reactive and react[s] readily with hydrogen ions.” Spec. 133.
Thus, Guarini addresses a problem similar to that addressed by the Appellant
(undesirable roughness/excess ions in electronic components), and it does so
in a way similar to that disclosed by the Appellant (oxidizing and polishing).
Given that the APA in view of Guarini renders obvious a donor wafer
portion that is polished and oxidized using an oxidizing agent that is
preferred by the Appellant, and that Guarini teaches reduction of ion
concentration, the Examiner reasonably concludes that a person of ordinary
skill in the art would have expected the donor wafer portion of the 3DIC of
the combined prior art to possess the properties recited by claim 1, including
being “substantially free of ions introduced to the donor wafer portion
during an ion cutting procedure.” The Appellant’s limited argument fails to
show otherwise. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
(“Where, as here, the claimed and prior art products are identical or
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Application 13/765,080
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.”).
On the record before us, we are not persuaded of reversible error in
the Examiner’s rejection of claim 1.
Claim 23.
Claim 23 depends from claim 1 and further recites “wherein the
polished oxidized portion substantially free of ions comprises a portion with
at least a fifty percent reduction of an original implantation of ions
introduced to the donor wafer portion during the ion cutting procedure.”4
The Examiner finds that a person of ordinary skill in the art would
have expected the APA as modified by Guarini to meet the limitation of
claim 23. See Final Act. 6.
The Appellant argues that “there is no evidence in record” supporting
the Examiner’s position, and that “[t]he failure to show how much Guarini
reduces ion concentration means that the Patent Office has not shown the
claim element, and the claim is non-obvious.”
That argument is unpersuasive for the reason discussed above with
respect to claim 1. See Best, 562 F.2d at 1255; see also See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418—19 (2007) (“[T]he [obviousness] analysis
4 In the event of further prosecution of the application on appeal, the
Examiner and Appellant may wish to consider whether claim 23 differs in
scope from claim 1. See, e.g., Spec. 132 (suggesting that the term
“substantially free of ions,” which appears in claim 1, refers to a reduction of
ions by at least fifty percent relative to the original implantation).
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need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”). We
affirm the Examiner’s rejection of claim 23.
CONCLUSION
We AFFIRM the Examiner’s rejections of claims 1—11, 21, and 23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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