Ex parte Maghsoudnia

Board of Patent Appeals and Interferences

May 31, 2000

08115440 (B.P.A.I. May. 31, 2000)

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for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PIROUZ MAGHSOUDNIA
____________
Appeal No. 1996-3909
Application No. 08/115,440
____________
ON BRIEF
____________
Before GARRIS, LIEBERMAN, and KRATZ, Administrative Patent
Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 4, 9 and 12-16, which are all of the
claims pending in this application.
BACKGROUND
Appellant's invention relates to a process for treating
wafers having a thin film resistor deposited thereon.
According to appellant, the sheet resistance of the resistor
is increased and the temperature coefficient of resistance is
Appeal No. 1996-3909 Page 2
Application No. 08/115,440
reduced by utilizing a specified annealing process involving:
(1) heating
the wafer to an annealing temperature above the decomposition
temperature of the thin film resistor, the increased annealing
temperature of the wafer being reached in about 5-10 seconds;
(2) carrying out the annealing step at the rapidly bumped up
annealing temperature for a time period of about 50-85
seconds; and (3) radiantly cooling the annealed wafer. An
understanding of the invention can be derived from a reading
of exemplary claim 13, which is reproduced below.
13. A process for increasing the sheet resistance and
lowering the temperature coefficient of resistance of a thin
film resistor deposited on a wafer, the process comprising:
(a) ramping the temperature of the wafer to an annealing
temperature which is above the decomposition temperature of
the thin film resistor by using a radiant heat source such
that the wafer reaches the annealing temperature within a ramp
up time of from about 5 to 10 seconds;
(b) annealing the wafer at the annealing temperature for
an annealing period of from about 50 to 85 seconds; and
(c) cooling the annealed wafer by radiant cooling.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Paulson et al. (Paulson) 4,510,178
Apr. 09, 1985
Vugts 4,520,342 May 28,
1985
Appeal No. 1996-3909 Page 3
Application No. 08/115,440
Chu et al. (Chu) 4,682,143 Jul. 21,
1987
Sparks 4,732,874 Mar. 22,
1988
Claims 4 and 12-16 stand rejected under 35 U.S.C. § 103
as being unpatentable over Paulson in view of Chu et al. and
Sparks.
Claim 9 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Paulson in view of Chu et al., Sparks and
Vugts.
OPINION
We have carefully reviewed the respective positions
presented by appellant and the examiner. In so doing, we find
ourselves in agreement with appellant’s viewpoint that the
examiner has not established a prima facie case of obviousness
of the claimed subject matter. Accordingly, we will not
sustain the examiner's rejections for essentially those
reasons advanced by appellant, and we add the following
primarily for emphasis.
The examiner (final rejection and examiner’ answer),
primarily relies on the teachings of Sparks regarding rapid
thermal annealing in combination with Paulson in an attempt at
Appeal No. 1996-3909 Page 4
Application No. 08/115,440
The other applied references have not been specifically relied upon by the1
examiner to teach or suggest those method steps.
We note, for example, that appellant has asserted that the “problems addressed2
by Sparks ‘874 do not exist in thin film resistors” (brief, page 14). The examiner has
not adequately rebutted this contention of appellant at pages 8 and 9 of the answer.
meeting the specified ramping, annealing and cooling steps
that are common to all of the claims on appeal . According to1
the examiner, it would have been obvious to one of ordinary
skill in the art at the time of the invention to modify the
process of Paulson by using “a rapid thermal anneal process as
taught by Sparks because it is desired to dissolve the metal
precipitates and keep the precipitates in solution by rapid
thermal annealing” (final rejection, page 8).
Besides the difficulty we have with the examiner’s
position regarding the obviousness of using the rapid thermal
annealing process steps of Sparks in Paulson especially in the
face of the contentions of appellant regarding the lack of
motivation established by the examiner for such a substitution
(brief, pages 10-14) , there is another significant hurdle2
that has not been cleared by the examiner. In particular, we
note that even if the proposed modification of Paulson’s
Appeal No. 1996-3909 Page 5
Application No. 08/115,440
process were made, the examiner has not convincingly
established that a process step of radiant cooling
corresponding to appellant’s claimed process step would
result.
It is manifest that the examiner must show that it would
have been obvious to combine the teachings of the applied
references so as to meet all of the limitations of the claimed
invention in order to establish the prima facie obviousness of
the claimed subject matter. As developed in appellant’s brief
(see, e.g., pages 11 and 14) however, the examiner has not
pointed out where any of the applied references teach or
suggest, alone or in combination, appellant’s radiant cooling
step. While
the examiner asserts that the cooling step of Sparks “would be
equivalent to a radiant cooling step” (answer, page 9), the
examiner has not adequately explained how this contention is
supported by the proffered teachings of Sparks. We observe
that appellant (brief, page 11) particularly notes the failure
of Sparks to teach radiant cooling.
Appeal No. 1996-3909 Page 6
Application No. 08/115,440
On this record, it is our view that the examiner has
failed to provide convincing reasons based on the applied
prior art, or on the basis of knowledge generally available to
one of ordinary skill in the art, as to why the teachings of
the references should be combined in a manner so as to arrive
at the claimed invention. We note that the mere fact that the
prior art could be modified as proposed by the examiner is not
sufficient to establish a prima facie case. See In re
Fritsch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir.
1992). The rejection fails for lack of a sufficient factual
basis being pointed out upon which to reach a conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988).
Accordingly, we agree with appellant that the examiner's
stated rejections fall short of establishing a prima facie
case of obviousness.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 4 and 12-16 under 35 U.S.C. § 103 as being
unpatentable over Paulson in view of Chu et al. and Sparks and
Appeal No. 1996-3909 Page 7
Application No. 08/115,440
to reject claim 9 under 35 U.S.C. § 103 as being unpatentable
over Paulson in view of Chu et al., Sparks and Vugts is
reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PAUL LIEBERMAN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
PFK/kis
Paul J. Winters, Esq.
SKJERVEN, MORRILL, MAC PHERSON,
FRANKLIN & FRIEL
Appeal No. 1996-3909 Page 8
Application No. 08/115,440
Suite 700
25 Metro Drive
San Jose, CA 95110