Ex Parte Morita et al

Patent Trials and Appeals Board

Apr 12, 2019

13636255 - (D) (P.T.A.B. Apr. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/636,255 09/20/2012 Shin ya Morita
22850 7590 04/16/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
404419US99PCT 7750
EXAMINER
MCDONALD, RODNEY GLENN
ART UNIT PAPER NUMBER
1794
NOTIFICATION DATE DELIVERY MODE
04/16/2019 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINY AMORITA, 1
Toshihiro Kugiyama, Takeaki Maeda, Satoshi Yasuno,
Yasuaki Terao, and Aya Miki
Appeal2017-008223 2
Application 13/636,255
Technology Center 1700
Before MARK NAGUMO, JEFFREY R. SNAY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Shinya Morita, Toshihiro Kugiyama, Takeaki Maeda, Satoshi Yasuno,
Yasuaki Terao, and Aya Miki ("Morita") timely appeal under 35 U.S.C.
1 The real party in interest is identified as Kabushiki Kaisha Kobe Seiko
Sho (Kobe Steel, Ltd.). (Appeal Brief, filed 11 August 2016 ("Br."), 2.)
2 Heard 2 April 2019. The Official Transcript will be made of record in due
course.
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Application 13/636,255
§ 134(a) from the Final Rejection3 of claims 7, 12, 13, and 15-17. 4 We have
jurisdiction. 35 U.S.C. § 6. We reverse.
OPINION
A. Introduction 5
The subject matter on appeal relates to an oxide for a semiconductor
layer of a thin film transistor ("TFT") used in a display device, especially an
organic electroluminescent ("EL") display. (Spec. 1, 1st para.)
The '255 Specification teaches that, for conventional TFTs based on
silicon, amorphous silicon (a-Si) provides the high carrier mobility and high
optical bandgap required for good TFT switching characteristics. 6 However,
a-Si must be deposited at high temperatures that are incompatible with resin
substrates and organic light emitting diode ("OLED") displays characteristic
of the large, high resolution, high speed, next-generation displays. (Id. at 1,
11. 7-11.) Amorphous oxide semiconductors composed of indium, gallium,
3 Office Action mailed 11 March 2016 ("Final Rejection"; cited as "FR").
4 Remaining copending independent claim 1 and dependent claims 3---6 have
been withdrawn from consideration by the Examiner (FR 1, § 5A), and are
not before us.
5 Application 13/636,255, Oxide for semiconductor layer of thin film
transistor, sputtering target, and thin film transistor, filed 20 September
2012, as the national stage under 35 U.S.C. § 371 of PCT/JPl 1/58847,
filed 07 April 2011. We refer to the '"255 Specification," which we cite as
"Spec."
6 Such characteristics are said to include high on-state current, low off-state
current, low subthreshold swing ("SS") value (the gate voltage required for
increasing the drain current by one order of magnitude), and a stable
threshold voltage. (Spec., para. bridging 1-2.)
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Application 13/636,255
zinc, and oxygen ("IGZO"), further doped with molybdenum (Mo), are
regarded as strong candidates to replace a-Si, as they exhibit high carrier
mobilities and can be formed, e.g., by sputtering, at much lower
temperatures. (Id. at 1, 11. 17-21.) However, the Mo-doped IGZO are said
to exhibit decreased on-state current and increased subthreshold swing
values. (Id. at 2, 11. 9-10.) Moreover, TFTs comprising amorphous IGZO
semiconductors must exhibit higher resistance to stress induced by the
application of voltages to the gate of the transistor, or by exposure to light
leaking from the liquid crystal cell, both of which can shift the threshold
voltage markedly. (Id. at 11. 11-16.)
Morita describes IGZOs containing certain additional elements in
certain amounts (see withdrawn sole independent claim 1 ), that are said to
overcome these problems. Morita claims a sputtering target used to deposit
the oxide (dependent claims 7, 12, 13, and 15-17).
Claim 7 is representative and reads:
A sputtering target for forming the oxide according to
Claim 1, the sputtering target comprising
In, Ga, and Zn; and at least one element selected from the
group X consisting of Si, Ni, Hf, Ta, and W,
wherein the sputtering target does not comprise Sn,
when the oxide[7J comprises Si as the element of the
group X, Si/(In +Ga+ Zn+ Si) x 100 = 2.0 to 15 at%;
7 The recitation of the term "oxide," which replaces the recitation of the
term "sputtering target," formerly used in claims 8-10, was introduced in the
amendment filed 3 August 2015; which also canceled claims 8-10. In the
Remarks/ Arguments section of that submission, Morita cites original claim 9
for support of the amendment to claim 7. ( Amendment and Request for
Continued Examination, 6, 11. 8-9 (3 August 2015).) Original claim 9 reads
in relevant part, "when the sputtering target contains Al as the element of
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Application 13/636,255
when the oxide[7J comprises Ni as the element of the
group X, Ni/(In + Ga + Zn + Ni) x 100 = 0.1 to 5 at%;
when the oxide[7J comprises Hf as the element of the
group X, Hf/(In +Ga+ Zn+ Hf) x 100 = 2.0 to 10 at%;
when the oxide[7J comprises Ta as the element of the
group X, Ta/(In +Ga+ Zn+ Ta) x 100 = 2.0 to 10 at%; and
when the oxide[7J comprises W as the element of the
group X, W/(In +Ga+ Zn+ W) x 100 = 2.0 to 10 at%.
(Claims App., Br. 20-21; some formatting added.)
Independent claim 1, which is not before us, is drawn to an oxide
comprising the elements in the amounts recited in claim 7.
The Examiner maintains the following ground of rejection: s, 9, 10
Claims 7, 12, 13, and 15-17 stand rejected under 35 U.S.C.
§ 103(a) in view of Orita. 11
the group X" (Spec. 21, 11. 6-7 (emphasis added); similarly for other
elements of group X). It appears that the term --oxide- in this context is
an inadvertent substitution for the term "sputtering target."
8 Examiner's Answer mailed 10 March 2017 ("Ans.").
9 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
10 The Examiner has withdrawn an obviousness-type double patenting
rejection over U.S. Patent No. 9,184,298 B2 (10 November 2015) (issued to
Shinya Morita et al., and assigned to Kobe Steel, Ltd.). (Advisory Action
entered 6 June 2016.)
11 Masahiro Orita et al., Electro-conductive oxides and electrodes using the
same, U.S. Patent No. 5,622,653 (1997).
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Application 13/636,255
B. Discussion
The Board's findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
The Examiner finds that Orita discloses sputtering targets (Orita
col. 13, 11. 4--23) for forming oxides comprising In, Ga, and Zn, as well as
elements from group X (Orita col. 7, 11. 1-38; and col. 14, 11. 4--51) 12.
(FR 2-3.) In particular, the Examiner finds that Orita discloses, in
Example 4-7 [Orita col. 29, 1. 36], that "Al is present at about 2 atomic%."
(FR 3, 1. 15.) The Examiner concludes that, because Si, Ni, Ge 13, Hf, Ta,
and Ware equivalents to Al 12, they can all be substituted at the value of 2%
exemplified for aluminum. (Id. at 11. 15-17.) In the Response to Arguments
section of the Final Rejection, the Examiner explains that the substitution
at 2 atomic% would have been selected because "[t]he metals are believed
to be equivalent." (Id. at 8, 11. 6-7).
Morita argues that the Examiner errs harmfully in finding that the
ordinary worker would have understood Orita to disclose that the members
of Group X are equivalents that could be substituted for one another in the
same or similar amounts. (Br. 9, 2d full para.) In particular, Morita urges
the Examiner takes improper Official Notice of the supposed equivalence of
12 Orita teaches, at cols. 7 and 14, conductive crystalline metal oxides and
sputtering targets, respectively, both having the formula
M(l )xM(2)yinzOcx + 3y/2 + 3z/2)-d, where M(l) can be Mg and Zn, M(2) can be
Al and Ga, and a host of other elements, including the elements in Group X,
can replace parts of M(l ), M(2), and In.
13 The elements germanium (Ge) and aluminum (Al) were canceled from
group X by the amendment filed 17 December 2015.
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the group X elements, and fails to provide persuasive evidence in support of
that notice. (Id.) The reason advanced by the Examiner, that the elements
are equivalent because "they are listed as materials that can [a]ffect
transmission" (Adv. 2, 1. 5), is not persuasive, in Morita's view, because the
Examiner has not indicated where Orita teaches that the amounts would have
been expected to be similar to one another, and in the range required by
claim 7. (Br. 12-13.) In this regard, Morita argues that Orita teaches that
the amount of metal used as replacement metal elements depends on the
light transmission (more than 70%; Orita col. 7, 11. 54--58) and the carrier
electron density (id. at col. 89, 11. 18-22.) (Br. 13, last para.) As evidence
that the members of Group X would not have been regarded as equivalents,
Morita points to Examples provided by Orita, in which Al is present in
amounts ranging from 0.04 to 6 at%. (Br. 14, 11. 1-3, citing Orita Tables 2,
11, and 15 (at cols. 17, 25, and 29, respectively.) In contrast, Morita urges,
Si and Ta are present in amounts ranging from 0.2 to 1 at%. (Br. 14, 11. 3-5;
15, 11. 5---6 (Si, citing Orita Tables 2, 7, 12, and 16); 16, 11. 1-2 (Ta, citing
Orita Tables 2 and 12).) Thus, Morita concludes, "Orita does not teach or
suggest that Al, Si, and Ta can be used in the same or similar amount."
(Id. at 14, 11. 6-7.) Morita also urges that "Orita is completely silent
regarding a specific content when the replacing element is Ni, Hf, or W"
(id. at 10, 11. 18-19), and urges that no prima facie case of obviousness has
been established for those elements either.
The Examiner acknowledges that "Orita [et al.] suggest using Si and
Ta at an amount of 0.2 to 1 at%." (Ans. 4, 1. 12.) "However," the Examiner
continues, "one of ordinary skill in the art would readily envisage selecting
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higher amounts of Si and Ta because in doing so the transmission properties
can be controlled." (Id. at 11. 12-14.)
The flaw in the Examiner's argument is that, while the transmission
properties will no doubt change, the Examiner has not explained how that
change would be "controlled," or why the ordinary worker would have
expected the transmission due to two times the amount of Si would remain
within values acceptable to Orita.
The Examiner responds further that "while there are differences in the
various metals[,] Orita suggest ranges for use of the metals and that one of
ordinary would select a value in that range to achieve control of
transmission." (Ans. 8, 11. 3-5.) The Examiner urges that the ordinary
worker "would readily envisage using the same or similar amount of Si, Ni,
Hf, Ta, Wat the same amount as Al because control of transmission
property is desired." (Id. at 11. 5-8.) The Examiner proceeds to demonstrate
that the amounts of Al used as a replacement metal in Tables 2 and 11 range
from 0.004 at% to 6 at%. 14 (Id. at 11. 8-16.) This demonstration does not
explain, however, why the other elements would have been expected to have
the same or similar optical transmission (transparency and absorption edge),
and conduction carrier density, as aluminum. As Morita points out, "Orita at
most only describes the equivalency of these metals in terms of their
function." (Reply 3, 11. 6-7.) The Examiner has not shown that Orita
describes or suggests, in Morita's words, "that the metals would be so
14 The calculation based on Example 3-14 in Table 11 shows that the amount
of Al used in Example 4-7, which has the same composition, is 6 at%,
not 2 at% are the Examiner found earlier (FR 3; Ans. 3.)
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equivalent that they could be used in the same or similar amount." (Id.
at 11. 8-9.)
We conclude that Morita has shown, by a preponderance of the
evidence on the present record, that the Examiner erred harmfully in
determining that the ordinary worker would have considered the elements of
group X to be equivalents such that there would have been a reasonable
expectation that those elements would be substituted, at the same atomic
percentage, for aluminum in the IGZO sputtering targets taught by Orita.
We therefore reverse.
C. Order
It is ORDERED that the rejection of claims 7, 12, 13, and 15-17 is
reversed.
REVERSED
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