Ex Parte Ervin et al

Patent Trial and Appeal Board

May 12, 2016

12822492 (P.T.A.B. May. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/822,492 06/24/2010 Joseph ER VIN
44152 7590 05/16/2016
ROBERTS MLOTKOWSKI SAFRAN & COLE, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
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.
BUR920090078US 1 5943
EXAMINER
MALEK, MALIHEH
ART UNIT PAPER NUMBER
2813
NOTIFICATION DATE DELIVERY MODE
05/16/2016 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):
docketing@rmsclaw.com
lgallaugher@rmsclaw.com
dbeltran@rmsclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH ERVIN, JEFFREY B. JOHNSON,
KEVIN McSTA Y, PAUL C. PARRIES, CHEN GWEN PEI,
GENG WANG, and Y ANLI ZHANG
Appeal2014-006102
Application 12/822,492
Technology Center 2800
Before MAHSHID D. SAADAT, JAMES R. HUGHES, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-8, 13-16, and 18-20, which constitute all the
claims pending in this application.2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 2.
2 Claim 12 has been canceled. Final Act. 2. Claim 17 is allowed. Id. at 1.
Claims 9-11, 21, and 22 are objected to as dependent upon a rejected base
claim, but indicated as allowable if rewritten in independent form. Id. at 8.
Appeal2014-006102
Application 12/822,492
INVENTION
Appellants' invention relates to structure and methods for controlling
bottom comer threshold in a semiconductor-on-insulator (SOI) device.
Abstract. Claim 1 is illustrative and reads as follows:
1. A method of fabricating a semiconductor structure,
compnsmg:
doping a comer region of a semiconductor-on-insulator
(SOI) island, wherein the doping comprises tailoring a localized
doping of the comer region to reduce capacitive coupling of the
SOI island with an adjacent structure.
REJECTIONS
Claims 1-5, 8, 13, 14, and 18-20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Radens et al. (US 6,426,252 B 1; issued July 30,
2002).
Claims 6, 7, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Radens and Bronner et al. (US
6,638,815 Bl; issued Oct. 28, 2003).
ANALYSIS
Claims 1, 3-5, 8, 13, and 14-35U.S.C.§102(b)
Appellants contend the cited portions of Radens do not teach the
claim limitation "wherein the doping comprises tailoring a localized doping
of the comer region to reduce capacitive coupling of the SOI island with an
adjacent structure," as recited in claim 1. App. Br. 4--5. Appellants argue
that Radens makes no mention of reducing capacitive coupling of the SOI
island 124 with an adjacent structure. Id. at 5. Appellants further argue that
the Examiner has not demonstrated or explained how the cited structure of
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Radens meets the functional limitation "to reduce capacitive coupling of the
SOI island with an adjacent structure," recited in claim 1. Id. at 6. Finally,
Appellants argue that the Examiner has not adequately supported the
determination that Radens inherently teaches tailoring a localized doping of
the comer region which reduces capacitive coupling of the SOI island with
an adjacent structure in selected areas. Id. at 7.
The Examiner responded that claim 1 is not structurally
distinguishable over Radens. Ans. 3--4 (citing Radens Figs. 2H-2I). The
Examiner found that Radens, similar to Appellants' Specification, discloses
"SOI island 124 on a BOX layer 122 with a comer 144-162." Final Act. 3.
The Examiner further found in Radens an adjacent structure surrounding the
SOI island, including structures OT 134, TTO 148, and GC 154. Id. The
Examiner found that "[p ]art of the comer 144-162 is connected to the trench
top oxide 148." Id. Therefore, the Examiner concluded that "Radens
teaches a method of fabricating a semiconductor structure, comprising:
doping a comer region of a semiconductor-on-insulator (SOI) island 124,
wherein the doping comprises tailoring a localized doping of the comer
region 162 .... " Final Act. 5 (citing Radens Figs. 2C-2I, col. 5, 1. 62---col. 6,
1. 10, col. 6 11. 51-55, and col. 3, 11. 1-11 ).
We agree with the Examiner that claim 1 is not structurally
distinguishable over Radens. In the Appeal Brief, Appellants pointed to
paragraph 34 of the Specification as supporting disclosure for the disputed
limitation. App. Br. 2. Paragraph 34 relates to Figure 7 and describes the
doped comer region as "doping is said to be tailored and localized to the
comer region of the SOI island" in "implementations of the invention [that]
avoid doping the entire sidewall and/or the entire bottom surface of the SOI
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island 40' ." Spec. if 34. Thus, paragraph 34 defines the placement of the
doping material in the comer region of the SOI island as the way the
localized doping of the comer region is tailored in order to reduce capacitive
coupling of the SOI island 40' with an adjacent structure 50' in Figure 7. Id.
The Figures cited by Appellants in conjunction with paragraph 34 as
supporting disclosure-Figures 6, 7, 13, and 14-----disclose no other way to
tailor the localized doping of the comer region to reduce capacitive coupling
of the SOI island with an adjacent structure, as claim 1 requires. See App.
Br. 2.
Appellants' recited method only requires the step of "tailoring a
localized doping of the comer region" which is described in Radens (supra).
In other words, the function or the result achieved by this tailored doping
does not distinguish the claimed subject matter over the applied prior art. It
is well settled that "apparatus claims cover what a device is, not what a
device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464,
1469 (Fed. Cir. 1990). Claims directed to an apparatus or a method of
making an apparatus must be distinguished from the prior art in terms of
structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78
(Fed. Cir. 1997).
Appellants present no persuasive explanation or evidence to rebut the
Examiner's findings. See Reply 2-5. Instead, Appellants raise the new
argument that the doping of source diffusion 162 in Radens increases the
capacitive coupling that could occur between SOI island 124 and capacitor
plate 134. Reply Br. 2-3. It is inappropriate for Appellants to raise for the
first time in the Reply Brief matters that could have been raised in the
Appeal Brief. Accordingly, we find that this belated new argument is
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technically waived. Ax parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative decision) ("[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner's rejections, but were not.").
We agree with the Examiner that the cited disclosure in Radens meets
the disputed limitation. At least Figure 2I of Radens discloses localized
placement of doping material in a comer region similar to that shown in
Figure 7 of Appellants' Specification, which, consistent with paragraph 34
of Appellants' Specification, reduces capacitive coupling of the SOI island
with an adjacent structure and meets the disputed limitation in claim 1.
For these reasons, we sustain the 35 U.S.C. § 102(b) rejection of claim
1, as well as the 35 U.S.C. § 102(b) rejection of claims 3-5 and 8, which
depend from claim 1 and for which Appellants refer to and rely on the
arguments made for claim 1. App. Br. 8. We also sustain the 35 U.S.C.
§ 102(b) rejection of independent claim 13, for which Appellants refer to
and rely on the arguments made for claim 1, as well as the 35 U.S.C.
§ 102(b) rejection of claim 14, which depends from claim 13 and for which
Appellants rely on the arguments made for claim 13. App. Br. 9-10.
Claim 2-35U.S.C.§102(b)
Regarding claim 2, Appellants contend Radens does not teach
"forming a gate of an eDRAM device in the SOI island" and "forming the
adjacent structure as a storage cell of another eDRAM device," as recited in
claim 2. App. Br. 9; Reply Br. 5-6.
Appellants first argue that an eDRAM is not a DRAM that is merely
embedded, as the Examiner found (see Ans. 6-7), but must be embedded
with an ASIC or processor. Reply Br. 5---6. Appellants point to definitions
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of eDRAMs in another patent application and in Wikipedia, but point to no
disclosure in their Specification as to how the claimed eDRAM is required
to be embedded with an ASIC or processor. See id. On the record before us,
Appellants' contentions do not persuade us that "eDRAM" would have had
the meaning urged by Appellants, or that Radens does not teach "an eDRAM
device," as recited in claim 2.
Appellants next contend Radens does not teach "a storage cell of
another eDRAM device," as recited in claim 2. Appellants argue that
Figures 2C-2I of Radens, relied on by the Examiner for claim 1, show the
formation of a single DRAM device. App. Br. 9. Appellants further argue
that the Examiner's reliance on Figure 3 of Radens, as disclosing that the
transistor 154-160-162 formed in the SO I island 124 of a first DRAM cell is
adjacent the trench capacitor OT of the neighboring cell, is incompatible
with the Examiner's findings for claim 1. Reply Br. 6-7. Specifically,
Appellants argue that the Examiner improperly identified the capacitor plate
134 as the recited "adjacent structure" in claim 1. Id.
Appellants' arguments are not persuasive of error. As the Examiner
pointed out, Radens shows the top view of an array of eDRAM cells (see
Radens Fig. 3) and does not show the side view of the array. See Ans. 7.
We agree with the Examiner that Radens discloses an adjacent structure
surrounding the SOI island that would encompass not only the structures
explicitly discussed by the Examiner (OT 134, TTO 148, and GC 154) in the
discussion of claim 1, but also the adjacent eDRAM device. See id.; Radens
Figs 2I, 3. Moreover, Appellants present no persuasive explanation or
evidence as to why the Examiner's findings based on Figures 2I and 3 of
Radens are incorrect. See Ans. 7.
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For these reasons, we are not persuaded that the Examiner erred in
finding Radens teaches the disputed limitations in claim 2. Accordingly, we
sustain the 35 U.S.C. § 102(b) rejection of claim 2.
Claims 18-20-35 U.S.C. § 102(b)
With respect to claim 18, Appellants first contend Radens does not
disclose "an isolation region between the SOI island and the structure," as
recited in claim 18. App. Br. 10. Appellants specifically argue that Raden's
isolation region 156 is not between the SOI island 124, which contains the
doped comer 162, and the structure 134. Id. Appellants, however, offer no
persuasive rebuttal to the Examiner's findings that, in Radens, the isolation
region 156 is structurally between the SOI island 124 and the structure 134
because it is positioned in the space separating the SOI island 124 and the
structure 134. Ans. 8.
Appellants also contend the Examiner erred in finding that Radens
teaches that "the structure is connected to a non-zero voltage during at least
a portion of device operation," as recited in claim 18. App. Br. 11-12.
Appellants, however, offer no persuasive rebuttal to the Examiner's
explanation that the non-zero connection is implied because, if the structure
134 of Radens was not electrically connected to a non-zero voltage at some
point, the DRAM would not operate. See Ans. 9.
Appellants further contend Radens does not disclose the limitation
"wherein one or more comer regions of the SOI island comprise a localized
doping that reduces capacitive coupling between the SOI island and the
structure," as recited in claim 18. App. Br. 1 l(emphasis omitted).
Appellants refer to and rely on the same arguments made for the similar
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limitation in claim 1, which we do not find persuasive of error. See Reply
Br. 8.
For these reasons, we are not persuaded that the Examiner erred in
finding Radens teaches the disputed limitations of claim 18. Accordingly,
we sustain the 35 U.S.C. § 102(b) rejection of claim 18.
Regarding dependent claim 19, which depends from claim 18,
Appellants refer to and rely on the argument made for claim 2 that Radens
does not disclose the recited "eDRAM." App. Br. 12. For the reasons
discussed above for claim 2, we are not persuaded of error and sustain the
35 U.S.C. § 102(b) rejection of claim 19.
With regard to dependent claim 20, which depends from claim 19,
Appellants refer to and rely on the argument made for claim 2 that Radens
does not disclose the recited "another eDRAM device." App. Br. 13. For
the reasons discussed above for claim 2, we are not persuaded of error and
sustain the 35 U.S.C. § 102(b) rejection of claim 20.
Claims 6, 7, 15, and 16-35U.S.C.§103(a)
Appellants do not argue claims 6, 7, 15, and 16 separately, but refer to
and rely on the arguments made for independent claims 1 and 13, from
which the claims depend. Accordingly, we sustain the 35 U.S.C. § 103(a)
rejection of claims 6, 7, 15, and 16.
DECISION
The decision of the Examiner to reject claims 1-8, 13-16, and 18-20
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)(l )(iv).
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AFFIRMED
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