Ex Parte Gardner et al

Board of Patent Appeals and Interferences

Nov 6, 2003

09207972 (B.P.A.I. Nov. 6, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARK I. GARDNER, DIM-LEE KWONG,
and H. JIM FULFORD JR.
____________
Appeal No. 2003-2079
Application No. 09/207,972
____________
ON BRIEF
____________
Before WALTZ, TIMM, and MOORE, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of claims 16 through 21, 23, 30 and 31. The claims
remaining in this application are claims 24 through 29, 32 and 33,
which stand allowed by the examiner, and claim 22, which was
objected to by the examiner as dependent upon a rejected base
claim, but would be allowable if rewritten in independent form,
including all of the limitations of the base claim and any
intervening claims (final Office action dated Nov. 19, 2002, Paper
No. 16, page 3). We have jurisdiction pursuant to 35 U.S.C. § 134.
Appeal No. 2003-2079
Application No. 09/207,972
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According to appellants, the invention is directed to a
semiconductor device with a graded-K gate dielectric, including a
low-trap-density nitrogen-containing oxide layer, with a gate
conductor above the dielectric material, to yield favorable
interface properties between the dielectric and the semiconductor
substrate (Brief, page 3). Illustrative independent claim 16 is
reproduced below:
16. A semiconductor device, comprising:
a low-trap-density nitrogen-containing oxide arranged upon an
upper surface of a semiconductor substrate;
a high-K dielectric having a dielectric constant greater than
about 5 arranged upon the nitrogen-containing oxide; and
a gate conductor arranged above the high-K dielectric.
The examiner relies upon the following references as evidence
of obviousness:
Wu 5,880,508 Mar. 09, 1999
Chou 5,994,734 Nov. 30, 1999
Kizilyalli et al. 6,320,238 B1 Nov. 20, 2001
(Kizilyalli ‘238, filed Jun. 25, 1999; continuation-in-part of
application No. 08/995,435 (Kizilyalli ‘435 application), filed on
Dec. 22, 1997; provisional application No. 60/033,839, filed on
Dec. 23, 1996)
Claims 16-19, 21, 23, 30 and 31 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Kizilyalli ‘238 in view
of Wu (Answer, page 4). Claim 20 stands rejected under 35 U.S.C.
Appeal No. 2003-2079
Application No. 09/207,972
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§ 103(a) as unpatentable over Kizilyalli ‘238 in view of Wu and
Chou (id.). We reverse both of the examiner’s rejections on appeal
essentially for the reasons stated in the Brief and Reply Brief and
those reasons set forth below. Furthermore, we remand this
application to the jurisdiction of the examiner for action
consistent with our remarks below.
OPINION
The examiner presents findings of fact and conclusions of law
regarding Kizilyalli ‘238, Wu and Chou on pages 4-5 of the Answer.
Appellants do not contest these findings or conclusions (see the
Brief and Reply Brief in their entirety). The sole argument
advanced by appellants is that the primary reference to Kizilyalli
‘238 “does not qualify as prior art” (Brief, pages 4-5; Reply
Brief, pages 2-3). As noted by appellants, Kizilyalli ‘238 was
filed on June 25, 1999, after the filing date of this application
(Dec. 9, 1998), and is only available as prior art if the ‘238
patent is accorded the effective filing date of its parent, the
Kizilyalli ‘435 application, filed on Dec. 22, 1997 (id.).
The examiner states that Kizilyalli ‘238 “has an effective
filing date of December 22, 1997.” Answer, page 5. The initial
burden of establishing a prima facie case of obviousness, and thus
establishing that the reference applied is available as prior art,
Appeal No. 2003-2079
Application No. 09/207,972
1The Kizilyalli ‘435 application has now issued as U.S.
Patent No. 6,548,854 B1 (the ‘854 patent). See the Answer, page
5, and the Reply Brief, page 3.
4
rests with the examiner. See In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The examiner states that
whether the parent patent to Kizilyalli1 supports the limitations
of Kizilyalli ‘238 is “irrelevant” to the present claims (Answer,
page 5). As correctly stated by appellants (Brief, page 4), this
is clear error since, to be entitled to the filing date of the
Kizilyalli ‘435 application, the claims of Kizilyalli ‘238 must be
disclosed pursuant to 35 U.S.C. §§ 120/112 in this parent
application. See In re Wertheim, 646 F.2d 527, 538-39, 209 USPQ
554, 565-66 (CCPA 1981)(Patent Office that wishes to utilize
against applicant part of patent disclosure found in application
filed earlier than date of application that became patent must
demonstrate that earlier-filed application contains Sections
120/112 support for invention claimed in reference patent). See
also MPEP, §2136.03, IV, 8th ed., Rev. 1, Feb. 2003; cf., Ex parte
Ebata, 19 USPQ2d 1952, 1954 (Bd. Pat. App. & Int. 1991).
As also correctly stated by appellants, there are two
limitations in the claims of Kizilyalli ‘238 that are not supported
Appeal No. 2003-2079
Application No. 09/207,972
2These two limitations are found in claim 1 (“said
dielectric material layer having an equivalent electrical
thickness of 2.2 nm or less”) and claim 11 (“an electrode
disposed directly on said at least one layer of high-k dielectric
material”).
5
in the Kizilyalli ‘435 application (Brief, page 4).2 The examiner
has failed to establish where these two claimed limitations are
supported, under sections 120/112, by the parent Kizilyalli
application ‘435. Accordingly, the examiner has not established
that Kizilyalli ‘238 should be accorded the effective filing date
of Dec. 22, 1997. Therefore Kizilyalli ‘238 only has an effective
filing date of June 25, 1999, and is not available as prior art to
reject the claims on appeal. Thus we cannot sustain the examiner’s
rejections based on Kizilyalli ‘238.
The decision of the examiner is reversed.
REMAND
As discussed above, the Kizilyalli ‘435 application was issued
as the ‘854 patent on Apr. 15, 2003 (Answer, page 5; Reply Brief,
page 3). As stated by the examiner (Answer, page 6), the claimed
subject matter on appeal is obvious over “the Kizilyalli parent
patent” in combination with Wu and Chou. Appellants and the
examiner have previously agreed that the effective filing date of
the Kizilyalli ‘435 application (now the ‘854 patent) establishes
Appeal No. 2003-2079
Application No. 09/207,972
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that this patent is available as prior art against the claims on
appeal (Answer, page 5; Brief, page 4; Reply Brief, page 3).
Accordingly, we remand this application to the jurisdiction of the
examiner for appellants and the examiner to reconsider the
patentability of the claimed subject matter in view of Kizilyalli
‘854, Wu and Chou. Prosecution must be reopened if any new ground
of rejection is entered by the examiner. See 37 CFR § 1.193
(2000).
Appeal No. 2003-2079
Application No. 09/207,972
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This application, by virtue of its “special” status, requires
an immediate action, MPEP § 708.01, (D).
REVERSED & REMANDED
THOMAS A. WALTZ )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CATHERINE TIMM ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JAMES T. MOORE )
Administrative Patent Judge )
TAW/jrg
Appeal No. 2003-2079
Application No. 09/207,972
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Robert C. Kowert
Meyertons, Hood, Kivlin, Kowert & Goetzel, P.C.
P.O. Box 398
Austin, TX 78767-0398