Ex Parte Mauder et al

Patent Trial and Appeal Board

Jan 31, 2017

12269480 (P.T.A.B. Jan. 31, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/269,480 11/12/2008 Anton Mauder I431.266.101/FIN998US 1394
25281 7590
DICKE, BILLIG & CZAJA
FIFTH STREET TOWERS
100 SOUTH FIFTH STREET, SUITE 2250
MINNEAPOLIS, MN 55402
EXAMINER
GUPTA, RAJ R
ART UNIT PAPER NUMBER
2829
NOTIFICATION DATE DELIVERY MODE
02/02/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPTO.PATENTS @dbclaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTON MAUDER and PHILIPP SENG1
Appeal 2015-004760
Application 12/269,480
Technology Center 2800
Before ADRIENE LEPIANE HANLON, WESLEY B. DERRICK, and
DEBRA L. DENNETT, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL2
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s maintained rejection of claims 1, 8-14, 25-32, and 34-37.3 We
have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.
1 Appellants state that the real party in interest is Infineon Technologies
Austria AG. Appeal Br. 3.
2 We refer to the Specification filed November 12, 2008, the Final Office
Action mailed June 26, 2014, the Appeal Brief filed November 20, 2014, the
Examiner’s Answer mailed January 20, 2015, and the Reply Brief filed
March 20, 2015.
3 Pending claims 15-24 stand withdrawn from consideration. Final Act. 1.
Appeal 2015-004760
Application 12/269,480
BACKGROUND
Appellants’ claimed invention relates to a semiconductor diode with
an integrated resistor. Spec. Abstract. All independent claims on appeal are
directed to a semiconductor diode. Claims 1, 30.
Claim 1 is representative of the claims on appeal.
1. A semiconductor diode, comprising:
a semiconductor body including a front surface and a back
surface and including a cathode emitter zone defining the
back surface and an anode zone disposed at the front
surface which are joined by a pn-junction;
a diode structure including an anode electrode and a cathode
electrode, the anode electrode disposed on the front
surface; and
a resistance layer comprising carbon disposed on and
uninterruptedly extending over the entire back surface at
the cathode emitter zone of the semiconductor body
providing an integrated resistor, the resistance layer
having first and second sides opposing one another, the
second side facing cathode zone at the back surface and
the cathode electrode disposed directly on and entirely
covering the first side of the resistance layer; and wherein
the resistance layer has a thickness in a range of 50pm to
500pm.
Appeal Br. (Claims Appendix) 15.
Independent claim 30 is likewise directed to a semiconductor diode,
particularly one in which the resistance layer comprising carbon is a non­
silicon resistance layer. Claims 1, 30.
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Application 12/269,480
REJECTIONS
The claims stand rejected under 35 U.S.C. § 103(a):
I. Claims 1, 9, and 25-29 over Mauder4 in view of
Tolonics;5
II. Claims 8 and 13 over Mauder in view of Tolonics
and Kitagawa;6
III. Claim 10 over Mauder in view of Tolonics and
Mauder II;7
IV. Claims 11 and 12 over Mauder in view of Tolonics
and Inoue;8
V. Claim 14 over Mauder in view of Tolonics,
Kitagawa, and Mauder II;
VI. Claims 30 and 32 over Mauder in view of Kodas;9
VII. Claims 31 and 3 6 over Mauder in view of Kodas
and Kitagawa;
VIII. Claim 33 over Mauder in view of Kodas and
Mauder II;
IX. Claims 34 and 35 over Mauder in view of Kodas
and Inoue; and
X. Claim 37 over Mauder in view of Kodas,
Kitagawa, and Mauder II.
4 Mauder et al., US 2005/0161746 Al, published July 28, 2005
5 Tolonics et al., US 2006/0255376 Al, published November 16, 2006.
6 Kitagawa et al., US 5,162,876, issued November 10, 1992.
7 Mauder et al., US 2004/0080015 Al, published April 29, 2004.
8 Inoue et al., US 2002/0081773 Al, published June 27, 2002.
9 Kodas et al., US 2003/0175411 Al, published September 18, 2003.
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Application 12/269,480
DISCUSSION
To prevail in an appeal to this Board, Appellants must adequately
explain or identify reversible error in the Examiner’s rejection. See
37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356,
1365-66 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to
make a prima facie case, it has long been the Board’s practice to require an
appellant to identify the alleged error in the examiner’s rejection); In re
Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (“[T]he burden of showing
that the error is harmful normally falls upon the party attacking the agency’s
determination.” (quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009))).
Appellants effectively argue all claims on the basis of independent
claim 1 or on the basis of arguments raised as to the rejection of claim 1.
Appeal Br. 6-13. We focus our discussion on the arguments as to claim 1 in
our decision as to all claims. 37 C.F.R. § 41.37(c)(l)(iv). On this record,
we are not persuaded that the Examiner erred reversibly in maintaining the
obviousness rejections of the claims over the collective teachings of the cited
prior art for the reasons expressed by the Examiner in the Final Office
Action and the Answer. We add the following.
Mauder relates to a semiconductor diode 1 (or 1') comprising an
anode 2 and cathode 3 and a semiconductor volume 7 disposed between the
anode 2 and cathode 3. Mauder Abstract, Figs. 1,2. In Figure 1, the
semiconductor volume 7 is comprised of a first semiconductor layer 4 (n+-
doped), a second semiconductor 5 (n'-doped), and a third semiconductor
layer 6 (p-doped). Mauder 28, Fig. 1. In Figure 2, the semiconductor
volume 7 is comprised of a first semiconductor layer 4 (n+-doped), a second
semiconductor 5 (n-doped), a third semiconductor layer 6 (n'-doped), and a
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Application 12/269,480
fourth semiconductor layer 9 (p-doped). Mauder ^ 37, Fig. 2. A plurality of
semiconductor zones 81 to 84 are disposed within the second semi-conductor
layer 5 (or 5'). Mauder ^ 28, Figs. 1, 2. The Examiner relies on the portion
of the semiconductor volume of semiconductor 5 (or 5') spanned by items
81-84 and semiconductor 4 as the resistance layer. Final Act. 3; Ans. 2-5.
Tolonics relates to forming integrated circuits. The Examiner relies
on Tolonics for its disclosure that carbon and/or germanium can be
incorporated into the lattice structure of crystalline silicon to change the
local resistance allowing adjustment of the resistance value without changes
in the layout and lithography masks. Final Act. 3—4 (citing Tolonics 15,
38); Tolonics Abstract. The Examiner further determines that a carbon
resistor would restrict current and power into the device slowing the
commutation process and, thus, protect the diode in extreme conditions.
Ans. 4.
The Examiner de facto concludes it would have been obvious to one
of ordinary skill in the art at the time of the invention to have included
carbon in a resistance layer of Mauder in order to adjust the resistance of the
resistance layer, including for the purpose of slowing the commutation
process, in a manner that is easier to manufacture and customize. Final Act.
3—4; Ans. 4-5.
As to the thickness of the resistance layer set forth in claim 1, the
Examiner de facto finds that the thickness is a result effective variable in the
determination that the thickness has an effect on, inter alia, the resistance
layer diode reverse voltage and device thickness (Final Act. 4), as well as,
operational characteristics including thermal capacity (Ans. 5-6). Further,
in response to Appellants’ contentions, the Examiner determines that the
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Application 12/269,480
thickness of the resistance layer of Mauder ranges from 3.2 pm to 50 pm and
that this range, at the upper end, overlaps with the claimed range of 50 pm to
500 pm. Ans. 5; see also Mauder 29 (disclosing a thickness a of
semiconductor zones 81 to 84 as 3 to 20 pm and a thickness b of layer 4 as
0.2 to 30 pm). As there is an overlap of the disclosed and claimed ranges,
the claimed range is also prima facie obvious on that basis. Ans. 5.
Appellants proffer four general arguments.
First, Appellants argue that the Examiner erred in finding that the
portion of the semiconductor volume spanned by items 81-84 and 4 as the
resistance layer because Mauder “explicitly states that ‘ [t]he p-type zones
formed by the semiconductor zones 81 to 84. . . [are] represented by the
resistance R (actually ‘Ro”) in the equivalent circuit diagram” and that
Mauder “illustrates the resistor Ro as extending between junction J2 and J3”
where J2 and J3 are the junctions between semiconductor zones 81 to 84 and
semiconductor layers 5 and 4, respectively. Appeal Br. 6-7 (citing Mauder
30, 34, Fig. 1). Appellants contend that because the region corresponding
to the resistance Ro for the disclosed diode corresponds to only that spanned
by semiconductor zones 81 to 84, semiconductor layer 4 cannot be part of the
resistance layer and thus Mauder fails to teach or suggest a resistance layer
disposed directly on the cathode electrode. Appeal Br. 7.
Appellants’ argument is not persuasive that the Examiner erred
reversibly. As highlighted by the Examiner’s comments (Ans. 2-3), there is
a reasonable basis to consider first semiconductor layer 4 as part of a
resistance layer for diode J1 where semiconductor layers 4 and 5 (or 5') are
formed of normal ohmic materials and Appellants fail to direct us to any
basis for requiring the claimed resistance layer to be formed of a single,
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Application 12/269,480
unitary layer of material. See, e.g., In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1379 (Fed. Cir. 2007) (It is well established that “the PTO must
give claims their broadest reasonable interpretation consistent with the
specification.”). As to Appellants’ arguments grounded on the resistance Ro
for the disclosed diode only corresponding to that spanned by semiconductor
zones 8i to 84, that is, that the “resistance layer” is bounded by junctions J2
and J3 (Appeal Br. 6-7), we find the arguments unpersuasive for the reasons
expressed by the Examiner (Ans. 3-4). Further, because junction diode J3 is
formed by both the zones 81 to 84 and the layer 4, the resistance Ro in the
corresponding circuit diagram with the corresponding connection below, not
at, diode J3 makes manifest that the resistance layer with the resistance Ro
does not exclude semiconductor layer 4 as contended by Appellants.
MauderFig. 1.
Appellants’ further argument in the Reply Brief grounded on zones 81
to 84 and the pn-junctions formed between them and surrounding material
(Reply Br. 2) is without persuasive merit where the Examiner’s rejection is
grounded on semiconductor layer 4 and the portions of semiconductor layer
5 (or 5') extending between semiconductor zones 81 to 84 being normal
ohmic material (Ans. 2-3).
Second, Appellants argue that because the semiconductor layer 4 of
Mauder cannot be interpreted as being part of the so-called resistance layer,
the semiconductor regions 81 to 84—separated from one another by portions
of semiconductor layer 5 (or 5')—Mauder also fails to teach or suggest a
resistance layer directly on and uninterruptedly extending over and covering
the back surface of the cathode. Appeal Br. 7. In the Reply Brief,
Appellants continue to argue that “semiconductor zones 81 to 84 and first
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Application 12/269,480
semiconductor layer 4 . . . clearly cannot be interpreted as an
uninterruptedly extending resistance layer as defined by independent
claim 1.” Reply Br. 2-3.
Appellants’ argument grounded on Mauder not disclosing a resistance
layer directly on the back surface of the cathode is addressed above. As to
Appellants’ further argument directed to the requirement that the resistance
layer extend uninterruptedly (Appeal Br. 7, Reply Br. 2-3), it is wholly
without persuasive merit both because it fails to address that semiconductor
layer 4 does extend without interruption over cathode electrode 3 (Figs. 1,
2)10 and because the rejection is grounded on those portions of 5 (or 5')
extending between semiconductor zones 8i to 84, not zones 81 to 84
themselves (Ans. 2—4).
Third, Appellants argue that there is no teaching or suggestion in
either Mauder or Tolonics that the resistance layer is a carbon layer and that
one of ordinary skill in the art would not replace the p-doped semiconductor
zones 81 to 84 with a carbon layer because it would eliminate the pair of p-n
junctions J2 and J3 from the Mauder device destroying its functionality.
Appeal Br. 7-8. As set forth by Appellants, the structure of the Mauder
semiconductor diode, particularly the particular biasing of junctions J1, J2,
and J3, maintains the blocking capacity of the n-doped central region so that
the semiconductor diode is not destroyed. Appeal Br. 8 (citing Mauder 2,
10 To the extent Appellants are arguing that the recited resistance layer be
uniform or homogenous, there is no basis for this in the recitation that the
resistance layer is “disposed on and uninterruptedly extending over the
entire back surface of the cathode emitter zone” (Claim 1) and unclaimed
features cannot impart patentability to claims. In re Hiniker Co., 150 F.3d
1362, 1369 (Fed. Cir. 1998); In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
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31-33). Appellants raise further arguments as to Tolonics (Reply Br. 3,
citing Tolonics claims 1 and 4), which we find untimely as they are new and
Appellants fail to establish why they could not have been raised in the
Appeal Brief (see generally Appeal Br.; Reply Br.). We deem the
arguments waived. See 37 C.F.R. § 41.41(b)(2).
Appellants’ arguments are found unpersuasive of reversible error
because they fail to address squarely the Examiner’s relied on combination
as set forth by the Examiner, including the determination that inclusion of a
carbon resistor would provide the same or similar benefit of protecting the
diode in extreme conditions as the structures in Mauder by restricting the
current and power into the device and there is insufficient explanation in this
record that the functionality of the Mauder semiconductor device would be
destroyed. Cf. DyStar Textilfarben Gmbh & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (“We will not read into a
reference a teaching away from a process where no such language exists.”).
Fourth, Appellants contend that the claimed thickness of the resistance
layer (50 pm to 500 pm) is not taught or suggested by Mauder because, even
if the first semiconductor layer 4 is considered part of the resistance layer,
the “thickness is in a range from 3.2 to 50 pm” (Appeal Br. 9) and that the
Specification establishes the criticality of the claimed thickness. Appeal Br.
9-10). Appellants rely on the Specification as supporting the criticality of
the thickness and the criticality to rebut the Examiner’s determination that
the skilled artisan would have arrived at the claimed range through no more
than routine experimentation. Appeal Br. 9-10 (citing Spec. 2, 26-29,
31-33, Table 1).
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Appellants’ contention that a thickness “in a range of 3.2 to 50 pm”
does not render obvious a range of 50pm to 500 pm is without persuasive
merit. A claimed range overlaps with a prior art range if the two ranges
share a common endpoint. In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir.
1997). And “the existence of overlapping or encompassing ranges shifts the
burden to the applicant to show that his invention would not have been
obvious.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Appellants’ reliance on the contention that the thickness has criticality
is likewise without persuasive merit to rebut the Examiner’s rejection
grounded on the skilled artisan arriving at the claimed range through nothing
more than routine experimentation. At the onset, on this record, we are
directed to no persuasive evidence or argument that the thickness was not
recognized as a result effective variable. Generally, Appeal Br.; Reply Br.
The Examiner’s reasonable determination that the thickness is a result
effective variable as to, inter alia, the resistance layer diode reverse voltage
and device thickness (Final Act. 4), as well as, operational characteristics
including thermal capacity (Ans. 5-6), stands unrebutted. Likewise, we are
directed to no evidence that anything more than routine experimentation
would have been required to discover the optimum or workable ranges and,
thus, it is only if the results of optimizing the variable are unexpectedly good
that Appellants can rebut the prima facie case. Geisler, 116 F.3d at 1469.
On this record, having considered Appellants’ proffered evidence,
cited portions of the Specification, we find it wholly insufficient to rebut the
prima facie case. It is well established that Appellants bear the burden of
showing that the claimed invention imparts unexpected results, including
when these are grounded on the criticality of a particular variable. Geisler,
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116 F.3d at 1469-70 (citing In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990)). Further, “it is well settled that unexpected results must be
established by factual evidence. ‘Mere argument or conclusory statements
in the [Specification does not suffice.’” Geisler, 116 at 1470 (quoting In re
De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)). In this case, the range
from 50 pm to 500 pm for which Appellants argue criticality is set forth as
being “[tjypical thickness values . . . [that] are readily compatible with the
thermal capacity requirements referred to above” (Spec. ^ 28) and the data
proffered is, as the Examiner finds, limited to “several data points inside the
claimed range, which do not show any unexpected or qualitatively different
behavior or trends” (Ans. 5). Cf In re Tiffin, 448 F.2d 791, 792 (CCPA
1971) (“[OJbjective evidence of non-obviousness must be commensurate in
scope with the claims which the evidence is offered to support.”). As to the
repeated contentions that the claimed range has criticality, they are without
persuasive merit. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney’s argument. . . cannot take the place of evidence.”).
For these reasons, we are not persuaded that the Examiner erred in
rejecting independent claim 1 subject to Rejection I. As to the remaining
claims subject to Rejection I and the further grounds of rejection (Rejections
II-X), we likewise are not persuaded that the Examiner erred reversibly
where Appellants rely on their arguments as to Rejection I.
Accordingly, we sustain the Examiner’s decision.
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Application 12/269,480
CONCLUSION
The Examiner’s rejections of claims 1, 8-14, 25-32, and 34-37 under
35 U.S.C. § 103(a) are 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).
AFFIRMED
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