Ex Parte Klee et al

Board of Patent Appeals and Interferences

Feb 8, 2011

10302349 (B.P.A.I. Feb. 8, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MAREIKE KLEE, RAINER KIEWITT, MIKE JU,
JEFFREY ZHANG, and CHRISTOPHER TAYLOR
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Appeal 2009-012621
Application 10/302,349
Technology Center 2800
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Before MAHSHID D. SAADAT, MARC S. HOFF, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-012621
Application 10/302,349

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STATEMENT OF CASE
Summary
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20, 22, and 23:
(1) Claims 1-12, 14, 15, 22, and 23 stand rejected under 35 U.S.C. §
103(a) as obvious over Motojima (US 4,612,562; issued Sep. 16, 1986) in
view of Imamura (JP 04-320062 A; published Nov. 10, 1992);
(2) Claim 13 stands rejected under 35 U.S.C. § 103(a) as obvious over
Motojima in view of Imamura and Zhao (US 6,984,577 B1; issued Jan. 10,
2006); and
(3) Claims 16-20 stand “rejected” under 35 U.S.C. § 112, ¶ 4.
Contrary to the Examiner’s statement that claim 21 stands rejected
under 35 U.S.C. § 112, ¶ 1 (Ans. 3), we understand this rejection to have
been withdrawn. See Reply Br. 5 (noting that the Examiner had previously
“indicated in the Advisory Action, ‘Applicant’s reply has overcome the . . .
112, 1st paragraph rejection of claim 21’”); see also Nov. 4, 2008, Advisory
Action at 1.
We reverse the obviousness rejections of claims 1-15, 22, and 23.
We dismiss the appeal with respect to the 35 U.S.C. § 112, ¶ 4
“rejection” of claims 16-20 because any alleged impropriety regarding a
claim’s form is a petitionable matter. See Ex parte Porter, 25 USPQ2d
1144, 1147 (BPAI 1992).
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claims 1-23 under 35 U.S.C. § 112, ¶ 2.

Appeal 2009-012621
Application 10/302,349

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Background
Appellants’ invention relates to “an integrated circuit arrangement
including a semiconducting substrate, active components, and passive
components such as capacitors and resistors. The resistors comprise
materials of a high resistivity and can be manufactured with resistance
values which lie within a narrow tolerance range” (Abstract). The narrow
tolerance range can be achieved by manufacturing the resistors of specified
materials having specified properties that are more easily controlled than
those of polysilicon (Spec. 1).
Independent claim 1 is illustrative, reading as follows:
1. An electronic device provided with an electronic
component which comprises an integrated circuit comprising a
semiconducting substrate with at least one active component
and, on said semiconducting substrate at least one capacitor and
at least one resistor which are electrically coupled to the active
component, wherein the resistor does not comprise poly-silicon
and wherein the resistor comprises at least one of: Ta1-x-ySixNy
(0 < x < 1, 0 < y < 1), NixCry (0 < x < 1, 0 < y < 1), SixCryOz (0
< x < 1, 0 < y < 1, 0 < z < 1), SixCryNz (0 < x < 1, 0 < y < 1, 0 <
z < 1[)], or CuxNiy (0 < x < 1, 0 < y < 1), and wherein the
resistor has a narrow tolerance range.
The obviousness rejections are premised upon the Examiner’s position
that it would have been obvious to have substituted NiCr for Motojima’s
aluminum gate/resistor 25a (see, e.g., Motojima, Fig. 9). The Examiner’s
rationale for making this substitution is that (1) Imamura teaches that the
gate electrode and the resistor may be alternatively made from NiCr; and (2)
“these [materials] were recognized in the semiconductor art as equivalents
for their use as gate and resistor materials, as taught by Imamura and
Motojima, and the selection of any of these known equivalents would have
been within the level of ordinary skill in the art” (Ans. 6-7).
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Application 10/302,349

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Appellants assert that the Examiner has failed to support the
conclusion that Al and NiCr were art-recognized equivalent materials. See,
e.g., App. Br. 9:5-6 (“Appellant finds nothing in any cited reference that
teaches or suggests that aluminum and NiCr may be used interchangeably.”);
see also Reply Br. 2-3 (“While . . . Motojima . . . indicates that its resistor
may include [a]luminum, and while . . . Imamura . . . indicates that another
sort of resistor may include NiCr, nothing in the record suggests that the
[a]luminum resistor of . . . Motojima . . . could be replaced with a relatively
high-resistance material such as NiCr and still function, or that the
respective resistors are interchangeable.”).

ANALYSIS
Appellants are correct that the Examiner has not provided any
technical rationale to support the legal conclusion that NiCr and Al were art-
recognized functional equivalent materials. Appellants are also correct that
nothing in the record suggests that the two gate materials could be used
interchangeably. Contrary to the Examiner’s conclusion that the references
evidence that materials were known to be used interchangeably, the record
indicates that the cited references are directed to two different material
systems: Motojima is directed to a silicon material system (see, e.g., col. 2,
ll. 40-41 (indicating that the embodiments of Figures 2 and 3 are formed on
a silicon substrate 12)); and Imamura is directed to a GaAs material system
(see, e.g., Abstract (indicating that the gate electrodes and the resistors are
formed on a semi-insulating GaAs substrate)). Moreover, the Examiner
acknowledged (Ans. 11) that he only relied upon Imamura’s English
abstract, not its entire disclosure.
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Application 10/302,349

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As such, the Examiner has not established a prima facie case of
obviousness for any of independent claims 1, 9, and 10. Accordingly, we
will not sustain the Examiner’s rejection of those claims or the rejection of
dependent claims 2-8, 11, 12, 14, 15, 22, and 23.
With respect to the rejection of dependent claim 13, the Examiner
only relies upon Zhao for additionally teaching the use of a TaSiN
adhesion/barrier layer on an aluminum lead (Ans. 8). The Examiner has not
alleged that Zhao cures the deficiency of the obviousness rejection explained
above. For the same reasons set forth above, then, we will not sustain the
Examiner’s rejection of dependent claim 13.

NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claims 1-23 under 35 U.S.C. § 112, § 2.
35 U.S.C. § 112, ¶ 2 requires that the specification of a
patent “conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the
applicant regards as his invention.” Because claims delineate
the patentee’s right to exclude, the patent statute requires that
the scope of the claims be sufficiently definite to inform the
public of the bounds of the protected invention, i.e., what
subject matter is covered by the exclusive rights of the patent.
Otherwise, competitors cannot avoid infringement, defeating
the public notice function of patent claims. (“[T]he primary
purpose of the requirement is ‘to guard against unreasonable
advantages to the patentee and disadvantages to others arising
from uncertainty as to their [respective] rights.’”) The Supreme
Court has stated that “[t]he statutory requirement of
particularity and distinctness in claims is met only when [the
claims] clearly distinguish what is claimed from what went
before in the art and clearly circumscribe what is foreclosed
from future enterprise.”
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Application 10/302,349

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Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir.
2008) (citations omitted) (brackets in original).
[T]he patent drafter is in the best position to resolve the
ambiguity in the patent claims, and it is highly desirable that
patent examiners demand that applicants do so in appropriate
circumstances so that the patent can be amended during
prosecution rather than attempting to resolve the ambiguity in
litigation.
Id. at 1255.
Turning to the present case, each of independent claims 1, 9, and 10
recites that “the resistor has a narrow tolerance range.” The claim term
“narrow” is a relative term. Neither the claims nor the Specification
provides any objective standard by which the skilled artisan could ascertain
how narrow a tolerance must be in order to constitute a “narrow tolerance
range.” Moreover, it is not sufficient that the Specification discloses the
resistor being of a material having a particle size which is easier to control
than that of polysilicon (see, e.g., Spec. 1) because the Specification does not
further set forth what tolerance ranges were able to be achieved for
polysilicon at the time of the invention. As such, a skilled artisan would not
be reasonably apprised of the claims’ metes and bounds, and therefore
whether any given electronic device would potentially infringe the claims.

DECISION
We reverse the Examiner’s rejections of claims 1-14, 15, 22, and 23.
We dismiss the appeal with respect to the Examiner’s rejection of
claims 16-20.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claims 1-23 under 35 U.S.C. § 112, ¶ 2.
Appeal 2009-012621
Application 10/302,349

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FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2007). This regulation states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds 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. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(1)(v).

REVERSED
37 C.F.R. § 41.50(b)

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