Ex Parte Hayashi et al

Board of Patent Appeals and Interferences

Sep 23, 2009

09772986 (B.P.A.I. Sep. 23, 2009)

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 2009-003171
Application 09/772,986
Technology Center 2800
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Decided: April 27, 2010
____________

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

RUGGIERO, Administrative Patent Judge.

ON REQUEST FOR REHEARING

Appellants request that we reconsider our Decision of September 23,
2009 wherein we sustained the Examiner’s 35 U.S.C. § 103(a) rejection of
claims 17-27 and 36 based on Hisao, the 35 U.S.C. § 103(a) rejection of
claims 28-32 based on the combination of Hisao and Colgan, and the
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35 U.S.C. § 103(a) rejection of claims 31-35 based on the combination of
Hisao and Seiki.
We have reconsidered our Decision of September 23, 2009 in light of
Appellants’ arguments in the Request for Rehearing, and we find no error
therein. We, therefore, decline to make any changes in the prior Decision
for the reasons which follow.

The following discussion addresses Appellants’ three points of
contention in the Request for Rehearing in support of the position that the
Board Decision erred by relying on assertions that are unsupported within
the Hisao reference or by any other supporting evidence:

I. There is no disclosure of intent in Hisao to optimize the
relationship between the gate insulating film 4 and the gate
electrode 5 whereby the thickness of the gate insulating film 4 is
made to become greater than the thickness of the gate electrode
5.

To whatever extent Appellants (Request 6-7) may be correct that there
is no indication from the disclosure of Hisao that there was any
contemplation of a desired relationship between the thicknesses of the
insulating film 4 and the gate electrode 5, it is not necessary that the
rationale for modifying a reference’s teaching come from the reference
itself. “[T]he [obviousness] 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., 550
U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
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2006). The KSR Court further recognized that “[w]hen there is a design
need or market pressure to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason
to pursue the known options within his or her technical grasp.” KSR, 550
U.S. at 421.
With the above discussion in mind, we remain unconvinced of any
error in the Examiner’s articulated line of reasoning which concluded that an
ordinarily skilled artisan would have a desire to reduce the size of the thin
film semiconductor to its smallest possible dimensions. The desire and
necessity of producing high-density thin film semiconductor designs is, in
fact, recognized at paragraph [0002] of Hisao. In doing so, it would follow
that Hisao’s smallest possible disclosed values for the gate insulating film 4
of 100 nm and “about 100 nm” (allowing for values slightly below 100 nm,
See In re Woodruff, 919 F. 2d 1575, 1577 (Fed. Cir. 1990) for the gate
electrode would be selected.1 The end result of such a selection would be a
thin film semiconductor device in which the thickness of the gate insulating
film is greater than the thickness of the gate electrode as claimed.
Further, it is not necessary that Hisao appreciated the significance of
the relationship of the thicknesses of the gate insulating film and the gate
electrode if the end result of the obvious size reduction resulted in the
claimed invention. It is not necessary that the prior art suggest the
modification to achieve the same advantage or result discovered by

1 Our original Decision found that the Examiner did not err in determining
that Hisao’s smallest disclosed thickness values (¶ [0012], of “around 50
nm” for the top layer 5a of the gate electrode and “50 nm” for the bottom
layer 5b of the gate electrode would result in a combined gate electrode
thickness of “about 100 nm.”
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Appellants. The rationale for modifying reference teachings is not limited to
the problem the patentee was trying to solve: “‘any need or problem known
in the field of endeavor at the time of invention and addressed by the patent
can provide a reason for combining the elements in the manner claimed.’”
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007)
(quoting KSR, 550 U.S. at 420).
We are also unpersuaded by Appellants’ arguments (Request 8-15)
that our original Decision erred by improperly relying on the Figure 1
drawing of Hisao in supporting the Examiner’s conclusion of obviousness.
It is important to note that neither the Examiner’s stated position nor our
original Decision relied solely on the drawing figures of Hisao in support of
the determination that the previously discussed obvious size reduction
consideration would result in a thin film semiconductor device with a gate
insulating film thickness greater than the gate electrode thickness.
Contrary to Appellants’ contention (Request 12-15) that there is no
written description within Hisao of the thickness of the gate insulating film
being greater than the gate electrode thickness, Hisao, as previously
discussed, discloses (¶¶ [0012] and [0016]) the lower limit thickness values
of 100 nm for the gate insulating film and “about 100 nm,” allowing for
values slightly below 100 nm for the gate electrode. With this disclosure, it
is not necessary, nor was there any intent to do so, to rely solely on Hisao’s
drawing figures to support the Examiner’s conclusion of obviousness.
Nonetheless, Hisao’s drawing figures stand as further evidence that an
ordinarily skilled artisan, seeking to make the device of Hisao as small as
possible, would select the smallest disclosed gate insulating film thickness
and the smallest disclosed gate electrode thickness, resulting in a device in
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which the thickness of the insulating gate film 4 is greater than the thickness
of the gate electrode 5 as illustrated in Figure 1. See In re Aslanian, 590
F.2d 911, 914 (CCPA 1979). Further, although Appellants contend (Request
13) that a skilled artisan could, from the thickness value ranges disclosed by
Hisao, reasonably select disclosed values where the thickness of the gate
insulating film would be less than the gate electrode thickness, there would
be no reasonable basis for doing so if the intent was to make the device of
Hisao as small as possible.

II. The lack of recognition of the optimizing of the relationship
between the thickness of the insulating film 4 and the thickness
of the gate electrode 5 in Hisao stands as an exception to the
“optimization” rule of In re Aller.

Appellants contend that our original Decision erred in relying upon In
re Aller, 220 F.2d 454, 456 (CCPA 1955) as support for the Examiner’s
determination of obviousness of the claimed invention. According to
Appellants (Request 16-18), an exception to the rule of In re Aller that it is
not inventive to discover optimum or workable ranges by routine
experimentation exists where, as in the present factual situation, there is no
recognition that the parameters to be optimized would affect the result. As
previously argued by Appellants, Hisao has no recognition of the
relationship between the thickness of the gate insulating film 4 and the gate
electrode 5.
In support of their position, Appellants direct attention to a prior
decision of the Board in Ex parte Whalen, 89 USPQ2d 1078, 1083-1084
(BPAI 2008), in which the Board concluded that there was no recognition in
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the cited art, which taught that low viscosity is a desirable characteristic of a
composition, that increasing viscosity of a composition is a parameter that
would effect the result through optimization. We do not find the facts of the
Whalen decision to be applicable to the facts in the present case. As we
previously pointed out, Hisao’s disclosure ([0002]) recognizes the desire and
necessity of producing high-density thin film semiconductor designs for use
in video components. We fail to see how an ordinarily skilled artisan would
not have recognized and appreciated that the thickness values of component
elements of the thin film semiconductor device of Hisao, such as the gate
insulating film 4 and the gate electrode 5, would be parameters that would
effect the desired goal of reducing the size of the semiconductor device to its
smallest possible values. In other words, as discussed supra, in “optimizing”
the size reduction of the device of Hisao, the ordinarily skilled artisan would
be obviously led to select the smallest possible disclosed thicknesses for the
gate insulting film and the gate electrode.

III. Appellants’ showing of unexpectedly good results by making
the thickness of the gate insulating film greater than the
thickness of the gate electrode stands as a further exception to
the “optimization” rule of In re Aller.

Appellants argue (Request 21-29) that our original Decision erred in
overlooking the evidence of unexpected results and comparative data
establishing the criticality of the claimed range of thickness values in which
the gate insulating film thickness is greater than the gate electrode thickness.
We find no error in our original Decision, however, in which we agreed with
the Examiner’s conclusion that the evidence presented in the graphs of
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Figures 3 and 4 shows no unexpected results for the disclosed gate electrode
thickness values of 100 nm or below. Further, while Appellants contend
(Request 26-27) that comparative data for gate electrodes of different
thicknesses in Figures 3 and 4 has been presented, it is noteworthy that no
data has been presented comparing thickness values for gate insulating film
thicknesses being equal or smaller than the gate electrode thickness as
compared to the claimed gate insulating film thickness being greater than the
gate electrode thickness.

CONCLUSION
Based on the foregoing, we have granted Appellants’ request to the
extent that we have reconsidered our original Decision of February 27, 2009,
but we deny the request with respect to making any changes therein.
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).

REHEARING DENIED

gvw

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