Ex Parte INO et al

Board of Patent Appeals and Interferences

Feb 20, 2003

08878588 (B.P.A.I. Feb. 20, 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publication and is not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MASUMITSU INO and TOSHIKAZU MAEKAWA
__________
Appeal No. 2002-0128
Application No. 08/878,588
__________
HEARD: FEBRUARY 5, 2003
__________
Before KRASS, RUGGIERO, and BARRY, Administrative Patent Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 1-6 and 17-22, which are all of the claims pending in the
present application. Claims 7-16 have been canceled.
The claimed invention relates to a process for fabricating a
thin film semiconductor in which a laser annealing treatment is
used to locally heat and melt a semiconducting thin film on an
insulating substrate. During a cooling step, the thin film
Appeal No. 2002-0128
Application No. 08/878,588
2
crystalizes and forms thin film transistors arranged with a
specific pitch in a lateral direction. More particularly, the
laser annealing treatment involves moving a laser beam, formed in
a band shape, relative to the insulating substrate in a lateral
direction with a specific movement pitch to form partially
overlapping irradiated regions. According to Appellants
(specification, pages 10-13), in order to ensure that the
overlapping irradiated regions where crystal defects are likely
to occur are not formed in the active layers of the transistors,
the laser beam is moved at a movement pitch in the lateral
direction which is set at value which is equal to or an integer
multiple of the arrangement pitch of the transistors.
Claim 1 is illustrative of the invention and reads as
follows:
1. A process of fabricating a thin film semiconductor
device, comprising the steps of:
forming a semiconducting thin film on the surface of an
insulating substrate to spread in both a longitudinal
direction and a lateral direction;
laser-annealing the semiconductor thin film by
intermittently irradiating a pulsed laser beam formed in a
band-shape along the longitudinal direction of the
insulating substrate to cause crystallizing of the
semiconducting thin film; and
Appeal No. 2002-0128
Application No. 08/878,588
1 The Appeal Brief was filed March 12, 2001 (Paper No. 18). In response to
the Examiner’s Answer dated May 18, 2001 (Paper No. 19), a Reply Brief was
filed July 23, 2001 (Paper No. 21), which was acknowledged and entered by the
Examiner as indicated in the communication dated July 27, 2001 (Paper No. 22).
3
integratedly forming thin film transistors, each
transistor including the semiconducting thin film as an
active layer, with a specific arrangement pitch in the
lateral direction;
wherein said laser annealing step further comprises a
step of moving the laser beam relative to the insulating
substrate in the lateral direction with a specific movement
pitch to form a partially overlapping region between
adjacent region irradiated with the laser beam, the movement
pitch between pulses of the laser beam being set at a value
equal to an arrangement pitch of the active layer of the
thin film transistors or at a value larger by a factor of an
integer than the arrangement pitch of the active layer of
the thin film transistors and positioning the substrate
before the annealing step so that the overlapping region
will be between the active layers of the thin film
transistors.

The Examiner relies on the following prior art:
Chae 5,432,122 Jul. 11, 1995
Claims 1-6 and 17-22, all of the pending claims, stand
finally rejected under 35 U.S.C. § 103(a) as being unpatentable
over Chae.
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the Briefs1 and Answer for their
respective details.
Appeal No. 2002-0128
Application No. 08/878,588
4
OPINION
We have carefully considered the subject matter on appeal,
the rejection advanced by the Examiner, the arguments in support
of the rejection and the evidence of obviousness relied upon by
the Examiner as support for the rejection. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
Appellants’ arguments set forth in the Briefs along with the
Examiner’s rationale in support of the rejection and arguments in
rebuttal set forth in the Examiner’s Answer.
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the invention as set forth in claims 1-6 and 17-22.
Accordingly, we reverse.
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, 1073-74, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17-18, 148 USPQ 459, 467 (1966), and to provide a reason why one
Appeal No. 2002-0128
Application No. 08/878,588
5
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection
of independent claims 1 and 17 based on Chae, Appellants assert
that the Examiner has failed to establish a prima facie case of
obviousness since all of the limitations of claims 1 and 17 are
not taught or suggested by the applied Watanabe reference. In
particular, Appellants contend (Brief, page 16; Reply Brief,
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Application No. 08/878,588
6
pages 5 and 6), that Chae lacks any teaching or suggestion of the
movement of the laser beam with a movement pitch that is related
to the arrangement pitch of the transistors.
After careful review of the Chae reference, in light of the
arguments of record, we are in general agreement with Appellants’
position as stated in the Briefs. We find no disclosure in Chae
of any relationship between the movement pitch of the scanning
beam and the arrangement pitch of the transistors on the
substrate, let alone the particular relationship set forth in
independent claims 1 and 17. Although the Examiner suggests
(Answer, pages 4 and 9) the inherency of controlling the movement
pitch of the scanning beam in Chae so that overlapping regions do
not fall in the channel region of the transistor, we find no
evidence on the record to support such an assertion. To
establish inherency, evidence must make clear that the missing
descriptive matter is necessarily present in the thing described
in the reference and would be recognized as such by persons of
ordinary skill. In re Robertson, 169 F.3d 743, 745, 49 USPQ2d
1949, 1950-51 (Fed. Cir. 1999) citing Continental Can Co. v.
Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed.
Cir. 1991). “Inherency, however, may not be established by
Appeal No. 2002-0128
Application No. 08/878,588
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probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not
sufficient.” Id. citing Continental, 948 F.2d at 1269, 20 USPQ2d
at 1749.
We further find to be unfounded the Examiner’s reliance on
the illustrations in Figures 5 and 9 of Chae as supporting the
conclusion that the beam movement pitch and transistor
arrangement pitch are related as in Appellants’ claims. Although
Chae’s Figure 5b shows the defect regions as falling outside of
the transistor channel regions in the particular illustrated
transistors, there is no indication anywhere in Chae that this
will occur throughout the transistor layout on the substrate or
would occur as a result of the control of beam movement pitch in
a particular relationship to transistor arrangement pitch.
Similarly, in our view, the Figure 9 illustration in Chae does
not support the Examiner’s assertion, since it merely illustrates
the overlapping boundary regions spaced apart according to the
movement pitch of the beam. The Examiner must not only make
requisite findings, based on the evidence of record, but must
also explain the reasoning by which the findings are deemed to
Appeal No. 2002-0128
Application No. 08/878,588
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support the asserted conclusion. See In re Lee, 277 F.3d 1338,
1343, 61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002).
Since all of the claim limitations are not taught or
suggested by the applied prior art, it is our opinion that the
Examiner has not established a prima facie case of obviousness
with respect to the claims on appeal. Accordingly, we do not
sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
independent claims 1 and 17, nor of claims 2-6 and 18-22
dependent thereon. Therefore, the Examiner’s decision rejecting
claims 1-6 and 17-22 is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
JFR:hh
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Application No. 08/878,588
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