Ex Parte REINBERG

Board of Patent Appeals and Interferences

Jun 7, 2006

09382442 (B.P.A.I. Jun. 7, 2006)

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written for publication and is not binding precedent of the Board.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. 2006-1107
Application No. 09/382,442
______________
ON BRIEF
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Before HAIRSTON, JERRY SMITH and SAADAT, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1, 2 and 4-14. Pending
claims 26-32 and 35-39 have been withdrawn from consideration.
The disclosed invention pertains to a method for reducing
random single bit data loss in a FLASH memory circuit having a
programming operation and an erase operation. A particular
feature of the invention is that a semiconductor layer is heated
in an atmosphere comprising a hydrogen isotope which incorporates
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Application No. 09/382,442
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the hydrogen isotope into the semiconductor layer.
Representative claim 1 is reproduced as follows:
1. A method for reducing random single bit data
loss in a FLASH memory circuit having a programming
operation and an erase operation, comprising:
providing a semiconductor layer having a surface;

heating the layer in an atmosphere comprising a
Hydrogen isotope wherein the Hydrogen isotope is
incorporated into the layer; and
fabricating a memory circuit having a programming
operation and an erase operation, comprising single bit
data using the semiconductor layer, the fabricating
comprising fabricating a gate region in the layer;
treating a portion of the surface to form a thin layer of
insulator film adjacent to the gate region and under the
gate region; and heating the thin layer in an atmosphere
comprising Hydrogen isotope, wherein single bit data loss
is reduced and wherein random single bit data loss is
prevented in both the programming operation and the erase
operation.
The examiner relies on the following references:
Sheu 4,840,917 Jun. 20, 1989
Nakanishi 5,145,797 Sep. 08, 1992
Nakajima et al. (Nakajima) 5,397,724 Mar. 14, 1995
Lisenker et al. (Lisenker) WO 94/19829 Sep. 01, 1994
(published World Int. Prop. Org. Patent Application)
The admitted prior art.
Claims 1, 2 and 4-14 stand rejected under 35 U.S.C.
§ 103(a). As evidence of obviousness the examiner offers
Nakanishi in view of Lisenker and the admitted prior art with
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respect to claims 1, 2, 4, 5 and 7-10, with Nakajima added to
this combination with respect to claim 6, and with Sheu added to
the first combination with respect to claims 11-14.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in the
claims on appeal. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
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Application No. 09/382,442
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support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966). The examiner must articulate
reasons for the examiner’s decision. In re Lee, 277 F.3d 1338,
1342, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002). In particular, the
examiner must show that there is a teaching, motivation, or
suggestion of a motivation to combine references relied on as
evidence of obviousness. Id. at 1343, 61 USPQ2d at 1433. The
examiner cannot simply reach conclusions based on the examiner’s
own understanding or experience - or on his or her assessment of
what would be basic knowledge or common sense. Rather, the
examiner must point to some concrete evidence in the record in
support of these findings. In re Zurko, 258 F.3d 1379, 1386, 59
USPQ2d 1693, 1697 (Fed. Cir. 2001). Thus the examiner must not
only assure that the requisite findings are made, based on
evidence of record, but must also explain the reasoning by which
the findings are deemed to support the examiner’s conclusion.
However, a suggestion, teaching, or motivation to combine the
relevant prior art teachings does not have to be found explicitly
in the prior art, as the teaching, motivation, or suggestion may
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be implicit from the prior art as a whole, rather than expressly
stated in the references. The test for an implicit showing is
what the combined teachings, knowledge of one of ordinary skill
in the art, and the nature of the problem to be solved as a whole
would have suggested to those of ordinary skill in the art. In
re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
citing In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313 (Fed.
Cir. 2000). See also In re Thrift, 298 F.3d 1357, 1363, 63
USPQ2d 2002, 2008 (Fed. Cir. 2002). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellant have been considered in this decision.
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Arguments which appellant could have made but chose not to make
in the brief have not been considered and are deemed to be waived
(see 37 CFR § 41.37(c)(1)(vii)(2004)).
We consider first the rejection of claims 1, 2, 4, 5 and
7-10 based on Nakanishi, Lisenker and the admitted prior art.
The examiner essentially finds that Nakanishi teaches the claimed
invention including a step of heating a semiconductor layer in
which hydrogen is inherently incorporated into the layer. The
examiner admits that Nakanishi fails to teach the claimed heating
in an atmosphere containing a hydrogen isotope. The examiner
notes that the admitted prior art teaches a passivation process
using hydrogen. The examiner finds that it would have been
obvious to the artisan to perform a passivation process on the
device of Nakanishi using hydrogen as taught in the admitted
prior art. Finally, the examiner cites Lisenker as teaching the
advantages of replacing hydrogen with deuterium. The examiner
finds, therefore, that it would have been obvious to the artisan
to replace the hydrogen atmosphere of the admitted prior art with
a deuterium atmosphere as taught by Lisenker (answer, pages 3-4).
Appellant argues that Nakanishi teaches oxidizing the
device in a dry oxygen atmosphere which excludes hydrogen or a
hydrogen-containing material such as water. Because Nakanishi
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uses a dry oxygen atmosphere, appellant argues that there is no
motivation to combine Nakanishi with Lisenker because Lisenker
describes a wet oxygen treatment. In other words, appellant
argues that the Lisenker method is usable in processes that
employ hydrogen, whereas, on the other hand, Nakanishi describes
a process that does not use hydrogen. Appellant also argues that
the deuterium teachings of Lisenker also do not suggest that
deuterium can be used to reduce random single bit data loss in a
FLASH memory cell. Appellant additionally argues that there is
no suggestion that the deuterium treatment of Lisenker would be
effective in an erase operation because deuterium does not have
the same removal properties as hydrogen (brief, pages 9-11).
The examiner responds that the dry oxygen of Nakanishi
unintentionally introduces hydrogen into the process, and “it is
important to replace the ‘unintentional’ hydrogen with
deuterium.” The examiner also notes that Lisenker refers to a
group of MOS based devices of which FLASH memory is a subset.
The examiner also responds that appellant has not pointed out how
the proposed combination differs from the claimed invention in
such a way that a deuterium treatment would be ineffective for an
erase operation (answer, pages 6-7).
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Appellant responds that Lisenker fails to support the
examiner’s position that hydrogen is unintentionally introduced
into the silicon oxide layer. Appellant also responds that the
applied prior art does not suggest the use of deuterium in a
FLASH memory (reply brief, pages 1-3).
We will not sustain the examiner’s rejection of claims 1,
2, 4, 5 and 7-10 for essentially the reasons argued by appellant
in the briefs. Lisenker teaches that a deuterium atmosphere has
advantages over a hydrogen atmosphere in many fabrication
processes. The examiner uses this teaching to replace the
“unintentional” hydrogen in the dry oxygen atmosphere of
Nakanishi with a deuterium atmosphere. We fail to see why an
artisan would have been motivated to use a deuterium atmosphere
in a situation where the presence of hydrogen was not desired in
the first place. In other words, there is no reason for an
artisan to seek to improve upon the properties of hydrogen when
there is not supposed to be any hydrogen in the environment.
Even if there is unintended hydrogen, there would be no
motivation to improve or enhance the properties of this
unintended hydrogen. We agree with appellant that the
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modification of the applied prior art proposed by the examiner
can only be the result of an improper attempt to reconstruct the
claimed invention in hindsight.
Since neither Nakajima nor Sheu overcomes the
deficiencies in the basic combination of references discussed
above, we also do not sustain the examiner’s rejection of claims
6 and 11-14.
In summary, we have not sustained any of the examiner’s
rejections of the claims on appeal. Therefore, the decision of
the examiner rejecting claims 1, 2 and 4-14 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
JS/hh
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Application No. 09/382,442
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