Ex Parte Hintermaier

Board of Patent Appeals and Interferences

Mar 30, 2006

09161196 (B.P.A.I. Mar. 30, 2006)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION

The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE

_____________

BEFORE THE BOARD OF PATENT
APPEALS
AND INTERFERENCES
_____________

Ex parte FRANK HINTERMAIER

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Appeal No. 2005-2491
Application No. 09/161,1961
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ON BRIEF
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Before PAK, WALTZ, and KRATZ, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1, 3, 5 and 7 through 12. Claims 2, 4, 6 and
13 through 24, the other claims pending in the above-identified
application, stand withdrawn from consideration by the examiner

1 Application for patent filed September 25, 1998.
Appeal No. 2005-2491
Application No. 09/161,196

2

as being directed to a non-elected invention. We have
jurisdiction pursuant to 35 U.S.C. § 134.
APPEALED SUBJECT MATTER
Claim 1 is representative of the subject matter on appeal
and reads as follows:
1. A capacitor in an integrated semiconductor circuit,
comprising:

a semiconductor substrate having a doped region
formed therein;

a first electrode connected to said doped region;

a second electrode;

a capacitor dielectric insulating said first
electrode from said second electrode; and

a barrier layer disposed below said capacitor
dielectric, said barrier layer consisting essentially of a
compound formed from a transition element and a material
selected from the group consisting of phosphorus, sulfur,
and arsenic.

PRIOR ART REFERENCE
The prior art references relied upon by the examiner are2:

2 The examiner no longer relies on U.S. Patent 5,705,685
issued to Lyons et al. on Jan. 6, 1998, U.S. Patent 5,990,348
issued to Lyons et al. on Nov. 23, 1999, U.S. Patent 6,043,184
issued to Karmakar on Mar. 28, 2000 and U.S. Patent 6,060,419
issued to Wijesekera et al. on May 9, 2000.
Appeal No. 2005-2491
Application No. 09/161,196

3

Summerfelt et al. (Summerfelt) 5,566,045 Oct. 15, 1996
Kawakubo et al. (Kawakubo) 5,691,219 Nov. 25, 1997
REJECTION
Claims 1 and 7 through 9 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by the disclosure of Summerfelt. Claims
1, 3, 5, and 7 through 12 stand rejected under 35 U.S.C. § 102(b)
as anticipated by the disclosure of Kawakubo.3
OPINION
Having carefully reviewed the claims, specification and

3 The examiner has withdrawn claim 4 from further
consideration. Thus, claim 4 included in this rejection has been
removed.
Appeal No. 2005-2491
Application No. 09/161,196

4

applied prior art, including all of the arguments and the
evidence advanced by the examiner and the appellants in support
of their respective positions, we agree with the appellant that
the examiner has not established a prima facie case of
unpatentability under Section 102. Accordingly, we reverse the
examiner’s Section 102 rejections for the reasons well
articulated by the appellant in the Brief and the Reply Briefs.4
As correctly pointed out by the appellant in his Brief and
Reply Briefs, the examiner has not demonstrated that Ga taught by
Summerfelt is a transition element and that the claimed barrier
layer is necessarily formed in Kawakubo.
CONCLUSION
In view of the foregoing, the decision of the examiner is
reversed.

REVERSED

4 Having reviewed the examiner’s Supplemental Answer, we are
disheartened that the examiner fails to follow the instructions
provided in the Remand Order dated October 31, 2003. It appears
that the examiner still fails to address the countervailing
evidence relied upon by the appellant in the Brief and the Reply
Brief, refers to a wrong patent number not relevant to the
presently claimed subject matter, improperly relies on the prior
art references not positively included in the statement of
rejection, and fails to correct the misquotation relied upon by
the examiner in the earlier Answer.
Appeal No. 2005-2491
Application No. 09/161,196

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CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )

CKP:TF

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