Ex Parte Kartal et al

Patent Trial and Appeal Board

Jun 18, 2013

10392509 (P.T.A.B. Jun. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte VELI KARTAL and HANS-JOACHIM SCHULZE
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Appeal 2012-006448
Application 10/392,509
Technology Center 2800
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Before ROBERT E. NAPPI, MARC S. HOFF, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

NAPPI, Administrative Patent Judge

DECISION ON APPEAL
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This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 17, 18, and 21 through 29. Claims 1 through 16, 19, and 20 have
been canceled.
We affirm.
INVENTION
The invention is directed to a semiconductor device where the
junction, between two doped regions of different conductivity, has a mean
free path length smaller than the doped regions. See pages 1 and 2 of
Appellants’ Specification. Claim 17 is representative of the invention and
reproduced below:
17. A body of doped semiconductor material comprising:
a doped semiconductor substrate having a certain mean
free path length for free charge carriers, and
an epitaxial layer of doped semiconductor material
disposed on a surface of the semiconductor substrate and
having one or more regions of scattering centers comprising
non-doping atoms of foreign matter, wherein the epitaxial layer
has a smaller mean free path length for the free charge carriers
in each region of the scattering centers relative to the certain
mean free path length of the semiconductor substrate, and a
combined height of the doped semiconductor substrate and the
epitaxial layer is greater than a height of just the substrate.

REJECTIONS AT ISSUE
The Examiner has rejected claims 26 and 28 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement.
Answer 5-6.
1

1
Throughout this opinion we refer to the Examiner’s Answer mailed on
January 18, 2012.
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The Examiner has rejected claims 29 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Answer 6-7.
The Examiner has rejected claims 17, 18, 21, 23, 24, 28, and 29 under
35 U.S.C. § 102(b) as anticipated by Ogino (U.S. 5,023,696, June 11, 1991).
Answer 7-10.
The Examiner has rejected claims 17, 18, and 21 through 29 under
35 U.S.C. § 103 (a) over Akiyama (JP 09-260640; published Oct. 3, 1997) in
view of Omura (U.S. 6,037,632, Mar. 14, 2000).
2
Answer 10-16.

Rejections under 35 U.S.C. § 112
ISSUES
Appellants argue on pages 11 and 12 of the Appeal Brief that the
Examiner’s rejection of claims 26 and 28 under 35 U.S.C. § 112, first
paragraph, is in error.
3
These arguments present us with the issue:
1) Did the Examiner err in finding that the originally filed disclosure
does not enable the skilled artisan to produce a device with a doped
layer, on an epitaxial layer, having a mean free path length greater
than the smaller mean free path length of the epitaxial layer?

2
While the statement of the rejection refers to Akiyama as Japanese
publication 09-260640, the Examiner’s explanation of the rejection and
Appellants’ arguments both refer to portions of Akiyama’s U.S. patent
6,163,040, issued December 19, 2000). We construe Akiyama’s US Patent
to be serving as an English translation of the Japanese patent document.
This Decision, likewise, references Akiyama’s US patent.
3
Throughout this opinion we refer to Appellants’ Appeal Brief filed on
October 31, 2011 and Reply Brief dated March 15, 2012.
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Appellants argue on page 13 of the Appeal Brief that the Examiner’s
rejection of claim 29 under 35 U.S.C. § 112, first paragraph, is in error.
These arguments present us with the issue:
2) Did the Examiner err in finding that the originally filed
Specification does not demonstrate that the Appellants had
possession of the invention of a p-n junction formed between the
claimed additional semiconductor material and the semiconductor
substrate?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellants’ arguments.
With respect to the first issue, directed to the enablement rejection
under 35 U.S.C. § 112, first paragraph, we agree with Appellants’
conclusion that the Examiner erred in finding that Appellants’ originally
filed Specification does not enable claims. Appellants have provided a
detailed accounting of where the limitations of claims 26 and 28 are
discussed in the originally filed Specification (App. Brief. 11-12). The
Examiner’s response to Appellants’ argument provides an explanation that
the claim is not enabled as the mean path length in the doped layer would be
shorter than in the epitaxial layer. Answer 25. We find the Examiner’s
rationale to be unpersuasive as the Examiner has not provided evidence to
support a finding that the mean path length in the doped layer would be
shorter, and not longer, as claimed. Accordingly, we will not sustain the
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Examiner’s rejection of claims 26 and 28 under 35 U.S.C. § 112, first
paragraph.

With respect to the second issue, directed to the written description
rejection under 35 U.S.C. § 112, first paragraph, we disagree with
Appellants’ conclusion that the Examiner erred in considering claim 29 as
reciting subject matter not described in the originally filed disclosure.
Appellants provide an explanation citing Figure 5 to show that the originally
filed Specification shows a p-n junction 100’ is between substrate 10’ and
semiconductor material 10”. Answer13. We disagree with Appellants that
this cited portion of the originally filed Specification provides notice that the
Appellants had possession of the subject matter of claim 29 at the time of
filing. Claim 29 recites that the p-n junction is between the additional doped
semiconductor layer (disposed on the epitaxial layer, see claim 28) and the
semiconductor substrate. However, in Figure 5 there is no epitaxial layer,
and the p-n junction 100’ is between the region 20” of substrate 10’ and
layer 10”. In Figure 5, the second semiconductor material 10” (additional
doped layer) is wafer bonded to the substrate 10’ above region 20”, and
there is no discussion of an epitaxial layer.
4
Speciation 14-15.
5

Accordingly, Appellants have not persuaded us of error in the Examiner’s

4
We note that some of the item numbers discussed in the Specification do
not correspond to the labels set forth in Appellants’ Drawings, e.g. the
Specification refers to item 20’ in Figure 5, whereas Figure 5 contains an
item 20”, but not a 20’.
5
Note page 15 of Appellants’ Specifications discusses scattering centers in
region 20” as being formed by adding non-doping particles during the
growth of crystal body 10’ (i.e. it is not an epitaxial layer).
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rejection, and we sustain the Examiner’s rejection of claim 29 under
35 U.S.C. § 112, first paragraph.

Prior art Rejections
ISSUES
Appellants argue on pages 4 through 7 of the Appeal Brief that the
Examiner’s rejection of claims 17, 18, 21, 23, 24, 28, and 29 under
35 U.S.C. § 102(b) based upon Ogino is in error. These arguments present
us with the issue:
3) Did the Examiner err in finding that Ogino teaches an epitaxial
layer on a substrate as recited in claims 17 and 21?
6

Appellants argue on pages 7 through11 of the Appeal Brief that the
Examiner’s rejection of claims 17, 18, and 21 through 29 under 35 U.S.C.
§ 103(a) based upon Akiyama and Omura is in error. These arguments
present us with the issue:
4) Did the Examiner err in finding the combination of Akiyama and
Omura teaches a scattering center?
5) Did the Examiner err in finding that the combination of Akiyama
and Omura teaches an epitaxial layer on a substrate as recited?
6) Did the Examiner err in find that the combination of Akiyama and
Omura teaches a second portion of the epitaxial layer spaced apart

6
Appellants arguments directed to this rejection present additional issues,
however we do not reach these additional issues as this issue is dispositive of
the Appeal.
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from the substrate by the first portion of the epitaxial layer, as
recited in claim 25?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellants’ arguments.
Rejection based upon Ogino
With respect to the third issue, Appellants argue that Ogino’s
substrate, item 11 is not an epitaxial layer as is recited in claims 17 and 21.
App. Brief 6. We concur with Appellants.
The Examiner apparently provides two rationales as to how Ogino
teaches the claimed invention. In one rationale, the Examiner equates
Ogino’s substrate 12 with the claimed substrate and substrate 11 as the
epitaxial layer. Answer 7-8. We disagree with this finding as Ogino in
column 4, lines 5-15 clearly indicate that substrates 11 and 12 are bonded
together. The Examiner has not provided any evidence that wafer-bonding
two crystalline semiconductor substrates produces a bonding interface that is
structurally identical to an interface associated with growing an epitaxial
layer.
In a somewhat related rationale, the Examiner interprets two wafer-
bonded substrates as reading on a substrate having an epitaxial grown layer
because, regardless of the formation process, in both processes all of the
regions or layers of the final structure would be monocrystalline. Answer
18. This rationale may establish that both layers of Ogino’s wafer-bonded
substrates are of the same crystallinity, just as are crystalline substrates
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possessing epitaxially grown layers. As noted above, though, this fact does
not further demonstrate the scatter layer of Ogino’s substrate additionally
has the atomic bond structure that is associated with growing an epitaxial
layer on a substrate. Accordingly, we will not sustain the Examiner’s
rejection of claims 17, 18, 21, 23, 24, 28, and 29 under 35 U.S.C. § 102(b)
based upon Ogino.

Rejection based upon Akiyama and Omura
With respect to the fourth issue, Appellants argue that Akiyama’s ion
implantation regions are recombination regions – not scattering centers.
App. Brief 7-8. The Examiner finds that the regions 11 are the same as the
claimed scattering regions. Answer 19.
We note regions 11 are identified as recombination regions (col. 10, ll.
60-67). Further, the Examiner finds that recombination regions are the same
as scattering regions. Answer 16, 19. We concur with the Examiner’s
finding, as it is supported by evidence of record. We also note that
Appellants’ Specification discusses creating the scattering centers in the
same manner as Akiyama creates regions 11; thus, providing further support
for the Examiner’s finding that the recombination centers are the same as
scattering centers. Specifically, Appellants’ scattering regions are created by
diffusing non-doping particles, such as germanium or carbon atoms into the
crystal body. Spec. 6:22-23; 11:4-7. Akiyama teaches recombination
regions 11 are also created by implanting carbon or germanium into the
substrate. See col. 10, ll. 20-35; ll. 60-62. See In re Best, 562 F.2d 1252,
1255 (CCPA 1977) ("Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical or
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substantially identical processes, the PTO can require an applicant to prove
that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product."). See also In re Spada, 911 F.2d
705, 708-09 (Fed. Cir. 1990). Appellants have failed to meet their burden of
showing any structure difference exists between their scattering regions and
Akiyama’s recombination centers. Thus, Appellants’ arguments directed to
the fourth issue have not persuaded us of error in the Examiner’s rejection.

With respect to the fifth issue, Appellants argue that Akiyama does
not teach an epitaxial layer as claimed. Specifically, Appellants assert that
Akiyama’s K plane is not an epitaxial layer and that the scattering centers
are not in the epitaxial layer. Brief 8-10. The Examiner provides two
rationales to show that the epitaxial layer is obvious. Similar to the
Examiner’s findings with respect to Ogino, the Examiner equates different
areas of the substrate (item 101, Fig. 4) as being structurally identical to an
epitaxial grown layer, as they are all from the same crystal. For the reasons
discussed above with respect to Ogino, we disagree with the Examiner’s
interpretation.
However, the Examiner also finds that Omura additionally teaches an
epitaxial growth layer over a doped region, wherein the epitaxial growth
layer is doped after it is formed. Answer 11. Appellants have not addressed
the Examiner’s findings directed to Omura or the Examiner’s findings that
the skilled artisan would have combined the teachings to arrive at the
claimed device with an epitaxial layer doped with non-doping atoms (e.g.
carbon or germanium). Accordingly, Appellants’ arguments directed to the
fifth issue have not persuaded us of error in the Examiner’s rejection. As the
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fourth and fifth issues are the only issues applicable to the rejection of
claims 17, 18, 21 through 24, 28, and 29 under 35 U.S.C. § 103(a) based
upon Akiyama and Omura, we sustain the Examiner’s rejection.

With respect to the sixth issue, Appellants argue that the Examiner’s
rejection is improper because even if it were assumed that the K plane and
layer 103 are epitaxial, the diffusion layer 103 is not spaced apart from the
substrate. Brief 11. The Examiner has responded by providing a marked up
copy of Akiyama’s Figure 3, which depicts the area of scattering centers 11,
as separating layer103 from substrate 101. Brief 11-12. We concur with the
Examiner’s explanation of how this meets the claim. We note as discussed
above, it is the combination of Akiyama and Omura that teaches that the
region with scattering centers 11 in the epitaxial layer. It is this epitaxial
layer, with scattering centers 11, that separates layer 103 from 101.
Accordingly, Appellants’ arguments directed to the sixth issue have not
persuaded us of error in the Examiner’s rejection. Thus, we sustain the
Examiner’s rejection of claims 25 through 27.

DECISION
The decision of the Examiner to reject claims 17, 18, and 21 through
29 is affirmed.
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
ELD