Ex Parte Reinberg

Board of Patent Appeals and Interferences

Jun 16, 2006

09189098 (B.P.A.I. Jun. 16, 2006)

The above-noted panel only recently received this appeal1
for decision.
1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ALAN R. REINBERG
__________
Appeal No. 2006-1133
Application 09/189,098
__________
ON BRIEF1
__________
Before THOMAS, KRASS, and BLANKENSHIP, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant has appealed to the Board from the examiner’s
final rejection of claims 1 through 20 and 32 through 71,
appellant having cancelled claims 21 through 31.
Appeal No. 2006-1133
Application 09/189,098
2
Representative claim 1 is reproduced below:
1. A contact for a semiconductor device, comprising:
an intermediate conductive layer contacting and in
electrical communication with a structure located at a lower
level than a silicon-containing dielectric layer of the
semiconductor device;
an insulator component positioned adjacent said intermediate
conductive layer so as to at least thermally insulate said
structure; and
an electrically conductive contact layer adjacent said
insulator component and in communication with said intermediate
conductive layer.
The following references are relied on by the examiner:
Buiguez et al. (Buiguez) 4,770,977 Sept. 13, 1988
Ovshinsky et al. (Ovshinsky) 5,296,716 Mar. 22, 1994
Whitten et al. (Whitten) 5,451,811 Sept. 19, 1995
Brown et al. (Brown) 5,792,594 Aug. 11, 1998
Claims 1 through 20 and 32 through 71 stand rejected under
35 U.S.C. § 103. As evidence of obviousness as to claims 1
through 6, 8 through 10, 32 through 38 and 68 through 70, the
examiner relies upon Brown in view of Buiguez, with the addition
of Whitten as to claim 11 in a second stated rejection. The
examiner rejects claims 7, 12 through 19, 39 through 54, 56
Appeal No. 2006-1133
Application 09/189,098
3
through 66, 69 and 71 in a third stated rejection as being
obvious over Ovshinsky in view of Brown, further in view of
Buiguez. To this latter stated rejection, the examiner adds
Whitten in a fourth stated rejection as to claims 20, 55 and 67.
Rather than repeat the positions of the appellant and the
examiner, reference is made to the brief and reply brief for
appellant’s positions, and to the answer for the examiner’s
positions.
OPINION
We reverse because our deliberations have led us to conclude
that the examiner has not established a prima facie case of
obviousness.
The examiner’s statements of the rejections at pages 3
through 7 in the answer appear to be identical to the manner in
which the examiner stated the rejections in the final rejection.
Among the six independent claims on appeal and the approximately
sixty total claims on appeal, the examiner has not established a
clear correspondence of all features of all claims on appeal to
the prior art relied upon in the rejections of the claims appeal.
The statements of the rejections do not treat any dependent claim
and there is a speculative if nonexistent treatment of the six
independent claims.
Appeal No. 2006-1133
Application 09/189,098
4
It appears that we are left with the burden of performing this
necessary correlation.
Additionally, the examiner has presented only weak reasons
of combinability of the applied prior art which appear to be
based upon mere conclusory statements. In re Kahn, 441 F.3d 977,
987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), has indicated that
“rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal
conclusion of obviousness.” For example, in the first stated
rejection, the examiner merely presents to us a line of reasoning
that it would have been obvious to the artisan to have utilized
the silicon-containing photosensitive polymers in Buiguez in the
device of Brown “because it makes it easy and cost effect[ive] to
perform.” In the third stated rejection the examiner considers
that it would have been obvious to have modified Brown in view of
Ovshinsky “to reduce cost promote high throughput and shorten
cycle time.” These rationales are not explained on the record in
such a manner as to convince us that it would have been obvious
for the artisan to have performed the claimed modifications or
substitutions as urged by the examiner.
Appeal No. 2006-1133
Application 09/189,098
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For his part, appellant has presented substantially twenty
pages of arguments in the principal brief on appeal challenging
the examiner’s reasoning of combinability and urging that even if
the references were properly combinable for some reason, all the
claimed elements recited in the independent claims 1, 12, 32, 39,
45 and 56 are not met by the combination. The answer has only
set forth three pages of responsive arguments to those extensive
positions set forth by appellant in the brief.
On the basis of the nature and extent of the positions of
the examiner and appellant, we must necessarily conclude that the
examiner has not established a prima facie case of obviousness of
each of the claims on appeal within 35 U.S.C. § 103. We note,
however, that from our prospective, the examiner is free to
reinstitute better-stated rejections under 35 U.S.C. § 103 based
upon the same or additional, different prior art by presenting a
detailed correspondence of the claimed features to those which
are alleged to be taught in the prior art along with well-
explained reasons of combinability within 35 U.S.C. § 103.
Appeal No. 2006-1133
Application 09/189,098
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In view of the foregoing, the decision of the examiner
rejecting all claims on appeal under 35 U.S.C. § 103 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
JDT:pgc
Appeal No. 2006-1133
Application 09/189,098
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