Ex Parte Larkin et al

Board of Patent Appeals and Interferences

Jul 27, 2009

09988651 (B.P.A.I. Jul. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID L. LARKIN, GEORGE E. HARRIS,
and WILLIAM D. SMITH
____________

Appeal 2009-001599
Application 09/988,651
Technology Center 2800
____________

Decided:1 July 27, 2009
____________

Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-001599
Application 09/988,651
decision twice rejecting claims 12-29 (Office Action, mailed Mar. 6, 2007),
the only claims pending in the application. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Claims 12 and 21 are illustrative of the subject matter on appeal, and
are reproduced from the Claims Appendix to the Appeal Brief (“App. Br.”),
filed May 24, 2007:
12. A semiconductor device manufactured using the following
process:

providing a semiconductor device having at least one metal layer
completed;

then applying a planarizing dielectric layer on top of the
semiconductor device and the metal layer; and

then providing a hydrogen treatment until hydrogen diffuses
throughout and substantially saturates the semiconductor device.

21. A semiconductor device manufactured using the following
process:

providing a semiconductor device having thereon at least one metal
layer completed; and

then providing a hydrogen treatment until hydrogen diffuses
throughout and substantially saturates the semiconductor device.

The Examiner relies on the following evidence to establish
unpatentability (Examiner’s Answer (“Ans.”), mailed Jan. 8, 2008, 4):
Mora 4,920,077 Apr. 24, 1990
Chen 5,866,945 Feb. 02, 1999
Ino 5,888,839 Mar. 30, 1999
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Application 09/988,651
Appellants request review of the following grounds of rejection (App.
Br. 3):
1. claims 12-29 under 35 U.S.C. § 112, second paragraph, as
indefinite;
2. claims 12-29 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement;
3. claims 12-14, 20-23, and 29 under 35 U.S.C. § 102(e) as
anticipated by Ino;
4. claims 21-23 under 35 U.S.C. § 102(b) as anticipated by Mora;
5. claims 12-14, 19-23, 28 and 29 under 35 U.S.C. § 102(e) as
anticipated by Chen; and
6. claims 15-18 and 24-27 under 35 U.S.C. § 103(a) as
unpatentable over Chen.
Rejection under 35 U.S.C. § 112, second paragraph, as indefinite

The issue presented for our review is whether Appellants have shown
reversible error in the Examiner’s determination that the term “substantially
saturates” in claims 12 and 21 renders the claims indefinite. We determine
that Appellants have shown reversible error for the reasons discussed below.
The invention is directed “to a method for decreasing CHC [(channel
hot carrier)] degradation” (Spec. 1), a phenomenon causing semiconductor
device performance degradation (Spec. 2:5-7). According to the
Specification,
[i]t has been theorized that contaminants migrate through
the semiconductor device and encounter “dangling bonds”. . . . It
is also theorized that if the bonds can be pacified, contaminants
are less likely to combine with the dangling bonds and degrade
the device.
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Application 09/988,651
Another theory concerning CHC degradation is that
contaminants are small enough to diffuse through the
semiconductor device and accumulate, leading to degradation of
performance. It is theorized that heat can cause an added
element to bond to the contaminant, thus rendering the
contaminant too large to diffuse through the semiconductor
device.

Spec. 3:16-4:2.
The invention employs a hydrogen treatment to “either pacify any
dangling bonds . . . or cause the hydrogen to bond with contaminants,
thereby making the contaminant too large to diffuse through [the]
semiconductor device.” (Spec. 8:2-7.)
In one embodiment, [the] hydrogen treatment involves placing
semiconductor device 10 in a hydrogen rich environment and
heating semiconductor device 10 in that environment until
hydrogen has saturated completely within semiconductor device
10. Other hydrogen treatments include any process that will
introduce hydrogen throughout semiconductor device 10,
including introducing hydrogen in situ using a plasma process.
Alternatively, the hydrogen can be implanted directly using ion
implantation.

(Spec. 7:23-8:2.)
“‘A determination of claim indefiniteness is a legal conclusion that is
drawn from the court's performance of its duty as the construer of patent
claims.’” Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338
(Fed. Cir. 2008) (quoting Personalized Media Commc'ns, LLC v. Int'l Trade
Comm'n, 161 F.3d 696, 705 (Fed. Cir. 1998)). A claim satisfies the
definiteness requirement of 35 U.S.C. § 112, second paragraph, when one
skilled in the art understands the claim parameters as read in light of the
specification. Personalized Media, 161 F.3d at 705. When “substantially”
is used in a claim as a word of degree, it is necessary to look to the
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Specification to determine a standard for measuring that degree. See Seattle
Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir.
1984).
The Examiner maintains that “substantially saturates” in claims 12
and 21 “is a relative term, which renders the claim[s] indefinite.” (Ans. 5.)
However, reading this term in light of the Specification, we are in agreement
with Appellants that the ordinary artisan would understand the scope of the
invention. As indicated by Appellants, one of ordinary skill in the art would
understand the term “saturation” as referring to a state in which there are no
available bond sites.2 (See App. Br. 4.) Thus, the ordinary artisan would
readily understand, both from his own knowledge and upon review of the
Specification, that the qualifying term “substantially” refers to a condition in
which “an insignificant number of such sites may not become saturated”
(App. Br. 4). Indeed, the Specification describes one embodiment in which
“hydrogen has saturated completely within [the] semiconductor device,” as
well as “[o]ther hydrogen treatments . . . that will introduce hydrogen
throughout [the] semiconductor device” (Spec. 7:26-29 (emphasis added)).
(See also, original claim 1 (“providing a hydrogen treatment until hydrogen
diffuses throughout the semiconductor device”).)
For the foregoing reasons, Appellants have shown reversible error in
the Examiner’s determination that the term “substantially saturates” in
claims 12 and 21 renders the claims indefinite. Accordingly, we do not

2 See, e.g., Webster’s Encyclopedic Unabridged Dictionary of the English
Language 1705 (1996 ed.) (Saturate: “to cause (a substance) to unite with
the greatest possible amount of another substance, through solution,
chemical combination, or the like.”).
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Application 09/988,651
sustain the rejection of claims 12-29 under 35 U.S.C. § 112, second
paragraph, as indefinite.
Rejection under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement

The issue presented for our review is whether Appellants have shown
reversible error in the Examiner’s finding that the term “substantially
saturates” renders the claimed invention broader in scope than the subject
matter described in the original Specification and claims. We determine that
Appellants have shown reversible error for the reasons explained below.
Whether an applicant has complied with the written
description requirement is a finding of fact, to be analyzed from
the perspective of one of ordinary skill in the art as of the date
of the filing of the application.
In re Alonso, 545 F.3d 1015, 1018-1019 (Fed. Cir. 2008). In determining
whether an Applicant has complied with the written description requirement,
the pertinent question is whether a person skilled in the art would understand
from the earlier application alone, without consulting the new matter in the
subsequent application, that the inventor had possession of the claimed
limitation when the earlier application was filed. Tech. Licensing Corp. v
Videotek, Inc., 545 F.3d 1316, 1333-34 (Fed Cir 2008). Although the later
claimed subject matter need not be expressed in ipsis verbis in the
application disclosure as originally filed, it is nonetheless necessary that the
written description of the application, as originally filed, must clearly allow
persons of ordinary skill in the art to recognize that the inventor invented
what is claimed. See also, In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir.
1989); In re Howarth, 654 F.2d 103, 105 (CCPA 1981) (“An inventor need
not . . . explain every detail [of the invention] since he is speaking to those
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Application 09/988,651
skilled in the art. What is conventional knowledge will be read into the
disclosure.”).
The Examiner contends that the “specification simply does not
convey that appellants envisioned, at the time of filing, decreasing CHC
degradation by only substantially saturating the device with hydrogen
without completely saturating it.” (Ans. para. bridging 8-9.) As
acknowledged by Appellants, the desired result of their invention is to
reduce the risk of contaminants (see Rep. Br. 2), and this result is optimally
achieved through complete saturation, i.e., by pacifying all dangling bonds
which could combine with contaminants or by causing hydrogen to bond
with all contaminants small enough to diffuse through the semiconductor
device and accumulate. However, as pointed out by Appellants, the
ordinary artisan, upon reading the original Application, would have
appreciated that the desired result of the invention could still be achieved
under somewhat less than optimal conditions. (Rep. Br. 2.) As discussed
above (see supra pp. 4-5), the Specification identifies a preferred
embodiment in which the device is completely saturated, but also suggests
that the risk of contaminant degradation is still reduced where hydrogen
diffuses throughout, but does not necessarily completely saturate the device,
leaving an insignificant number of dangling bonds or contaminants small
enough to diffuse through the device.
For the foregoing reasons, Appellants have shown reversible error in
the Examiner’s finding that the term “substantially saturates” renders the
claimed invention broader in scope than the subject matter described in the
original Specification and claims. Accordingly, we do not sustain the
rejection of claims 12-29 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
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Rejections under 35 U.S.C. § 102 – Ino, Mora, and Chen and the
Rejection under 35 U.S.C. § 103

Having considered the respective positions of the Examiner and the
Appellants, we determine that the issue presented with respect to each of the
prior art rejections is whether Appellants have shown that the Examiner
reversibly erred in finding that the Ino, Mora, and Chen devices contain
diffused hydrogen and, therefore, appear to be identical to the semiconductor
device of the appealed claims.3 We determine that Appellants have not
shown reversible error for the reasons discussed below.
Appellants contend that the references fail to anticipate the appealed
claims because there is no teaching of manufacturing a semiconductor
device by substantially saturating the device with hydrogen, nor is there a
disclosure of using hydrogen for the purpose of decreasing CHC
degradation. (See App. Br. 5-7.)
However, the Examiner finds, and Appellants do not dispute (see Ans.
14; see generally, Rep. Br.) that:
1. The claims do not recite the use of hydrogen for the purpose
of decreasing CHC degradation. (Ans. 15.)
2. The claims are drafted in product-by-process format and,
therefore, do not limit the final, claimed semiconductor device to one
which is substantially saturated with hydrogen. (See Ans. 14.)
3. One of ordinary skill in the art would be aware that
hydrogen diffuses out of silicon over time, so the level
of hydrogen in the semiconductor’s final structure will
be lower than the hydrogen level immediately following
the hydrogenation treatment. As such, even a device

3 Appellants’ arguments relate to limitations found in both independent
claims 12 and 21. (See App. Br. 5-6.)
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Application 09/988,651
that was initially ‘completely saturated’ with hydrogen
would eventually lose hydrogen until it is less than
saturated.

(Ans. 14.)
4. Ino, Mora, and Chen disclose semiconductor devices
containing diffused hydrogen. (See Ans. 6-8 and citations to
references.)
“The patentability of a product does not depend on its method of
production. If the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.” In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985) (citations omitted).
Where . . . the claimed and prior art products are identical or
substantially identical, or are produced by identical or
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.
Whether the rejection is based on ‘inherency’ under
35 U.S.C. § 102, on ‘prima facie obviousness' under
35 U.S.C. § 103, jointly or alternatively, the burden of proof is
the same, and its fairness is evidenced by the PTO's inability to
manufacture products or to obtain and compare prior art
products.

In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations omitted). See also,
In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Appellants argue that the references fail to disclose the use of a
hydrogen treatment step as claimed in manufacturing their devices.
However, Appellants have not presented arguments or evidence to refute the
Examiner’s finding that, regardless of the manufacturing methods used in
the references, the final devices contain diffused hydrogen and, therefore,
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would appear to be identical to Appellants’ claimed semiconductor device.
Accordingly, Appellants have not met their burden of establishing that the
recited process steps would result in a device having patentably distinct
characteristics from the devices produced by the applied prior art processes.
Because Appellants have not shown reversible error in the Examiner’s
findings of anticipation, we sustain the rejections of claims 12-14, 20-23,
and 29 under 35 U.S.C. § 102(e) as anticipated by Ino; claims 21-23 under
35 U.S.C. § 102(b) as anticipated by Mora; and claims 12-14, 19-23, 28 and
29 under 35 U.S.C. § 102(e) as anticipated by Chen.
In response to the rejection of claims 15-18 and 24-27 under 35
U.S.C. § 103(a) as unpatentable over Chen, Appellants rely on the same
arguments in support of patentability of claim 12. (App. Br. 7.) Having
found these arguments unpersuasive for the reasons stated above, we
likewise sustain this ground of rejection.
CONCLUSION
The rejections under 35 U.S.C. § 112, first and second paragraphs, are
reversed. The rejections under 35 U.S.C. §§ 102 and 103 are affirmed.
The decision of the Examiner rejecting claims 12-29 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)(v).

AFFIRMED

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Appeal 2009-001599
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