Ex Parte Ohtani et al

Board of Patent Appeals and Interferences

Apr 26, 2010

10946072 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HISASHI OHTANI, AKIHARU MIYANAGA,
SATOSHI TERAMOTO, and SHUNPEI YAMAZAKI
____________________

Appeal 2009-011672
Application 10/946,072
Technology Center 1700
____________________

Decided: April 26, 2010
____________________

Before MICHAEL P. COLAIANNI, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 and 27 through 51, which are all of the
claims pending in the above-identified application. We have jurisdiction
pursuant to 35 U.S.C. § 6.
We REVERSE.
Appeal 2009-011672
Application 10/946,072
2

STATEMENT OF THE CASE
The subject matter on appeal is directed to, inter alia, method of
manufacturing a semiconductor device.
The Examiner maintains the rejection of claims 1 and 27-51 under
nonstatutory obviousness-type double patenting as unpatentable over claims
1-27 of Zhang (US 5,403,772, issued Apr. 4, 1995).

ISSUE
Did the Examiner reversibly err in determining that a method for
manufacturing a semiconductor device having two etching steps as required
by Appellants’ claims 1, 31, 37, and 46 defines merely an obvious variation
of the method of claims 1-27 of Zhang? We decide this issue in the
affirmative.
PRINCIPLES OF LAW
The key question in any obviousness double patenting analysis is:
“Does any claim in the application define merely an obvious variation of an
invention claimed in the patent asserted as supporting double patenting?”
General Foods v. Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1278
(Fed. Cir. 1992) (discussing In re Vogel, 422 F.2d 438 (CCPA 1970)).
Answering this question requires that the decisionmaker first construe the
claims in the patent and the claims under review and determine the
differences between them. Eli Lilly v. Barr Labs., 251 F.3d 955, 970
(Fed.Cir.2001). After determining the differences, the decisionmaker must
determine whether the differences in subject matter render the claims
patentably distinct. Id.

Appeal 2009-011672
Application 10/946,072
3
FINDINGS, ANALYSIS AND CONCLUSION
The Examiner states that "[t]he patent claims [1-27] do in fact render
the instant claims obvious to one of ordinary skill in the art. The instant
claims do teach etching to pattern the silicon and a separate etching step to
remove the metal." (Ans. 4). We disagree.
As Appellants correctly state,
the Examiner provides conclusory statements with no reference
to any specific claims or claim language . . . nothing in the
claims [of Zhang] describes or suggests two distinct etching
steps of the same semiconductor film, much less an etching step
before crystallization of the semiconductor film and a separate
etching step after crystallization to remove an 'edge portion' of
the semiconductor film.

(Reply Br. 3) (emphasis added). In this regard, for example, while each of
Zhang's claims 5, 9, and 18 teaches a single step of patterning or etching a
silicon film, the Examiner does not direct us to any specific claim language
setting forth two etching steps either expressly or inherently or provide any
credible reason to support the determination that a second etching step as
required by Appellants' claims 1, 31, 37, and 46 would have been an
obvious variation of the method of Zhang's claims 1-27.
Thus, it follows that the Examiner reversibly erred.

ORDER
In summary, the rejection made by the Examiner is reversed.
REVERSED

cam
Appeal 2009-011672
Application 10/946,072
4

FISH & RICHARDSON P.C.
P.O. BOX 1022
MINNEAPOLIS MN 55440-1022