Ex Parte Hayashi et al

Board of Patent Appeals and Interferences

Jun 28, 2007

09772986 (B.P.A.I. Jun. 28, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HISAO HAYASHI, MASAHIRO FUJINO,
YASUSHI SHIMOGAICHI, and MAKOTO TAKATOKU
____________

Appeal 2007-0665
Application 09/772,986
Technology Center 2800
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Decided: June 28, 2007
____________

Before JOSEPH F. RUGGIERO, LANCE LEONARD BARRY, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1-8 and 13-16. Claims 9-12 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
Appeal 2007-0665
Application 09/772,986

We affirm-in-part and enter a new rejection pursuant to 37 C.F.R.
§ 41.50(b).
Appellants’ invention relates to a thin film semiconductor device
formed as integrated circuits on an insulating substrate with bottom gate
structured thin film transistors. The bottom gate structure has a gate
electrode, a gate insulating film, and a semiconductor thin film stacked in
the order from below upward. The gate electrode is made of metallic
material having a thickness of less than 100nm while the gate insulating film
has a thickness greater than the thickness of the gate electrode.
(Specification 6-8).
Claim 1 is illustrative of the invention and reads as follows:
1. A thin film semiconductor device comprising:

an insulating substrate; and

a thin film transistor formed on said insulating substrate, wherein

said thin film transistor is formed in a bottom gate structure having gate
electrode, a gate insulating film, and a semiconductor thin film stacked in
the order from below upward, and

said gate electrode is made of metallic material having a thickness of less
than 100nm;

said gate insulating film has a thickness that is greater than said thickness
of said gate electrode.

The Examiner relies on the following prior art reference to show
unpatentability:
Hisao (as translated) JP 10-209467 Aug. 7, 1998
(Published Japanese Patent Application)

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Claims 1-8, 13, and 15 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Hisao. Claims 14 and 16 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Hisao.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Briefs and Answer for the respective details. Only
those arguments actually made by Appellants have been considered in this
decision. Arguments which Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed waived [see
37 C.F.R. § 41.37(c)(1)(vii)].

ISSUES
(1) Under 35 U.S.C § 102(b), with respect to appealed claims 1-8, 13,
and 15, does Hisao have a disclosure which anticipates the claimed
invention? Specifically, does Hisao disclose a thin film
semiconductor device with a metallic material gate electrode
having a thickness of less than 100nm?
(2) Under 35 U.S.C § 103(a), with respect to appealed claims 14-16,
has the Examiner established a prima facie case of obviousness
based on the disclosure of Hisao?

PRINCIPLES OF LAW
1. ANTICIPATION
It is axiomatic that anticipation of a claim under § 102 can be found if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and Lindemann
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Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452,
1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharmaceutical
Corp., 432 F.3d 1368, 1375-76, 77 USPQ2d 1321, 1325-26 (Fed. Cir. 2005),
(citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc.,
976 F.2d 1559, 1565, 24 USPQ2d 1321, 1326 (Fed. Cir. 1992)).
Anticipation of a patent claim requires a finding that the claim at issue
“reads on” a prior art reference. Atlas Powder Co. v. IRECO, Inc., 190 F.3d
1342, 1346, 51 USPQ2d 1943, 1945 (Fed Cir. 1999) (“In other words, if
granting patent protection on the disputed claim would allow the patentee to
exclude the public from practicing the prior art, then that claim is
anticipated, regardless of whether it also covers subject matter not in the
prior art”) (internal citations omitted).
2. OBVIOUSNESS
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In so doing, the Examiner must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17,
148 USPQ 459, 467 (1966). “[T]he examiner bears the initial burden, on
review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
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obviousness’ . . . [H]owever, the analysis 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.” KSR Int’l Co. v. Teleflex Inc., 127
S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007) (quoting In re Kahn, 441
F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)).

ANALYSIS
35 U.S.C. § 102(b) REJECTION
In addressing the language of independent claims 1 and 5, the
Examiner finds that Hisao discloses a thin film semiconductor device having
an upper layer gate electrode with a thickness of about 50-300 nm and a
lower gate electrode with a thickness of 50-200 nm. According to the
Examiner (Answer 3), Hisao’s two gate layers taken together have a
combined thickness of about 100-500 nm allowing for a lower limit value of
slightly above or less than 100 nm, thereby meeting the claimed
requirements.
Appellants’ arguments in response assert that the Examiner has not
shown how each of the claimed features is present in the disclosure of Hisao
so as to establish a case of anticipation. Appellants’ arguments (Br. 7; Reply
Br. 3) focus on the contention that the 100nm lower limit of Hisao’s gate
electrode thickness range does not satisfy the requirements of claims 1 and 5
which require a gate thickness of less than 100 nm.
After reviewing the disclosure of Hisao in light of the arguments of
record, we are in general agreement with Appellants’ position as stated in
the Briefs. Our interpretation of the disclosure of Hisao coincides with that
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of Appellants, i.e., there is no disclosure, expressly or inherently, of a thin
film semiconductor device with a gate electrode having a thickness of less
than 100 nm as claimed.
We do not disagree with the Examiner that Hisao’s disclosure of a
range lower limit combined gate thickness of about 100 nm could be
reasonably interpreted as “allowing” for thicknesses slightly above or below
100 nm, i.e., a value which would overlap the claimed range of “less than
100 nm.” See In re Woodruff, 919 F.2d 1575, 1577, 16 USPQ2d 1934, 1936
(Fed. Cir. 1990). Since there are no specific examples disclosed in Hisao of
gate thicknesses less than 100 nm, however, the appealed claims would be
anticipated only if the claimed subject matter were disclosed in Hisao “with
sufficient specificity to constitute an anticipation under the statute.” See
Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 999, 78 USPQ2d 1417,
1423 (Fed. Cir. 2006). In our view, Hisao’s disclosed combined gate
thickness range of 100-500 nm, with no specific gate thickness examples of
less than 100 nm, does not describe the claimed gate thickness feature of
“less than 100 nm” with sufficient specificity to form a basis for a rejection
based on anticipation.
In view of the above discussion, since all of the claim limitations are
not present in the disclosure of Hisao, we do not sustain the Examiner’s
35 U.S.C. § 102(b) rejection of independent claims 1 and 5, nor of claims 2-
4, 6-8, 13, and 15 dependent thereon.

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35 U.S.C § 103(a) REJECTION
With respect to the Examiner’s obviousness rejection of claims 14 and
16 based on the teachings of Hisao, Appellants’ arguments in response assert
a failure to set forth a prima facie case of obviousness since all of the claim
limitations are not taught or suggested by the Hisao reference. In particular,
Appellants contend (Br. 7-9; Reply Br. 3) that Hisao does not disclose a thin
film semiconductor device having a gate electrode with a thickness of 90
nm. Further, Appellants argue that the Examiner has provided no
evidentiary support for the conclusion that it would have been obvious to the
ordinarily skilled artisan to form the gate electrode of Hisao with a thickness
of 90 nm.
Our review of the arguments of record, however, finds us in
agreement with the Examiner’s position as stated in the Answer. We
initially note that, while we found Hisao’s gate thickness disclosure of
“about 100 nm” to not be anticipatory of a claim limitation reciting “less
than 100 nm,” we did find that the language “about 100 nm” allows for
values slightly below 100 nm. Accordingly, a prima facie case of
obviousness is established for claimed values of “less than 100 nm” since
Hisao’s disclosed combined gate thickness range of 100-500 nm overlaps
the claimed range in view of the fact that the lower limit of the range can be
slightly below 100 nm. (Woodruff, 919 F.2d at 1577, 16 USPQ2d at 1936).
As to the question of the obviousness of particular values of gate
thickness below 100 nm, such as the claimed 90 nm, we find no error in the
Examiner’s conclusion, based on the teachings of Hisao, that it would have
been “obvious to make the gate thickness as small as possible by selecting a
gate thickness of 90 nm since the gate thickness is [sic, a] variable of
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importance subject to routine experimentation and optimization.” (Answer
7). “[W]here the general conditions of a claim are disclosed in the prior art,
it is not inventive to discover the optimum or workable ranges by routine
experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235
(CCPA 1955).
Further, although Appellants’ arguments point to their drawing
Figures 3 and 4 in support of their position, we find no evidence of criticality
of the claimed gate thickness value of 90 nm or, for that matter, of any
particular value below 100 nm. Accordingly, since it is our opinion that the
Examiner’s prima facie case of obviousness has not been overcome by any
convincing arguments from Appellants, the Examiner’s 35 U.S.C. § 103(a)
rejection, based on Hisao, of dependent claims 14 and 16, is sustained.
REJECTION UNDER 37 C.F.R. § 41.50(b)

We make the following new ground of rejection using our authority
under 37 C.F.R. § 41.50(b).
Claims 1-8, 13, and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hisao. With respect to claims 1-8, 13, and 15, Hisao
discloses a thin film semiconductor display device having an insulating
substrate 1, pixels 14 in matrix form, and thin film transistors 3 with a
bottom gate structure. This bottom gate structure has a gate electrode 5, a
gate insulating film 4 and a polycrystalline thin film 2 stacked in the order
from below upward. The gate electrode 5, constructed of an upper layer 5a
with low thermal conductivity and a lower layer 5b with high thermal
conductivity, has a combined gate thickness of about 100-500 nm (Hisao,
¶ 0012) which overlaps the claimed range of “less than 100 nm” since the
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lower limit range value of “about 100 nm” allows for values slightly below
100 nm. Hisao also discloses that the gate insulating film 4 has a thickness
in the range of 100-200 nm which overlaps the claimed range of “greater
than 100 nm.” In situations where claimed ranges overlap the ranges
disclosed in the prior art, a prima facie case of obviousness is established.
See Woodruff, 919 F.2d at 1577, 16 USPQ2d at 1936, and In re Wertheim,
541 F.2d 257, 271, 191 USPQ 90, 103-04 (CCPA 1976).
CONCLUSION
In view of the foregoing, we reverse the Examiner’s 35 U.S.C.
§ 102(b) rejection of claims 1-8, 13, and 15, but we sustain the 35 U.S.C.
§ 103(a) rejection of claims 14 and 16. A new rejection of claims 1-8, 13,
and 15 under 35 U.S.C. § 103(a) is entered pursuant to 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides [a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner....

(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record....

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

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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