Ex Parte Sandhu et al

Patent Trial and Appeal Board

Jan 30, 2013

11185186 (P.T.A.B. Jan. 30, 2013)

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.
11/185,186 07/19/2005 Gurtej S. Sandhu MI22-2906 3549
21567 7590 01/31/2013
Wells St. John P.S.
601 West First Avenue
Suite 1300
Spokane, WA 99201-3828
EXAMINER
MAI, ANH D
ART UNIT PAPER NUMBER
2829
MAIL DATE DELIVERY MODE
01/31/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GURTEJ S. SANDHU and D. MARK DURCAN
____________

Appeal 2010-007682
Application 11/185,186
Technology Center 2800
____________

Before MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007682
Application 11/185,186

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 41-49, 51, 52, 54, 55, 57-62, 64-68, and 70-76. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm-in-part.

THE INVENTION
Appellants’ claimed invention is directed to a semiconductor substrate
and a trench extending into the substrate. The trench has a narrow bottom
portion and an upper wide portion over the bottom portion and joining to the
bottom portion at a step. A substantially solid electrically insulative material
substantially fills the trench. A void can be within the substantially solid
insulative material, and at least substantially entirely within the bottom
portion of the trench. Spec. ¶ [0006].
Independent claim 41, reproduced below, is representative of the
subject matter on appeal.
41. A method of forming a semiconductor construction, comprising:
providing a semiconductor substrate;
forming a first opening extending into the substrate, the first
opening having a first width;
forming a second opening extending downwardly into the
substrate from the first opening, the second opening having a second
width which is less than the first width;
forming electrically insulative material within the first and
second openings, the electrically insulative material substantially
filling the first opening and leaving a void within the second opening;
and
out-gassing material from the insulative material into the void.

Appeal 2010-007682
Application 11/185,186

3
REFERENCES and REJECTIONS
1. The Examiner rejected claim 71 under 35 U.S.C. § 112, first
paragraph, as lacking enablement.
2. The Examiner rejected claims 41-44, 51, 52, 62, 64, 70, and 72 under
35 U.S.C. § 102(b) as anticipated by Hong (Sug Hun Hong et al., A
Novel T-Shaped Shallow Trench Isolation Technology, 40 JAPAN J.
APPLIED PHYSICS 2616 (2001)) as evidenced by Subramanian (US
6,445,072 B2; Sept. 3, 2002) and Horie (US 5,928,428; July 27,
1999).
3. The Examiner rejected claims 58-61 under 35 U.S.C. § 102(b) as
anticipated by Sridhar (US 5,930,595; July 27, 1999) as evidenced by
Subramanian and Horie.
4. The Examiner rejected claims 45, 65-68, and 76 under 35 U.S.C.
§ 103(a) as obvious over Hong and Kameyama (US 4,472,240; Sept.
18, 1984).
5. The Examiner rejected claims 46, 48, 49, 54, 55, 57, and 71 under 35
U.S.C. § 103(a) as obvious over Hong and Sandhu (US 2004/0224510
A1; Nov. 11, 2004).
6. The Examiner rejected claim 47 under 35 U.S.C. § 103(a) as obvious
over Hong, Sandhu, and Kim (US 6,620,681 B1; Sept. 16, 2003).
7. The Examiner rejected claim 73 under 35 U.S.C. § 103(a) as obvious
over Hong and Price (US 4,639,288; Jan. 27, 1987).
8. The Examiner rejected claim 74 under 35 U.S.C. § 103(a) as obvious
over Hong and Tang (US 6,727,150 B2; Apr. 27, 2004).
9. The Examiner rejected claim 75 under 35 U.S.C. § 103(a) as obvious
over Hong, Sandhu, and Tang.
Appeal 2010-007682
Application 11/185,186

4
ISSUES
The issues are whether the Examiner erred in finding that:
1. Claim 71 lacks enablement;
2. Hong as evidenced by Subramanian and Horie teaches “out-
gassing material from the insulative material into the void” as
recited in claim 41;
3. Hong as evidenced by Subramanian and Horie teaches “a plurality
of steps in the semiconductor substrate” as recited in claim 62;
4. Sridhar as evidenced by Subramanian and Horie teaches “forming
a void in the first material; and providing a second material into the
void” as recited in claim 58; and
5. Hong in combination with Sandhu teaches the limitation of “filling
the upper portions of the openings and leaving voids within the
lower portions of the openings, the electrically insulative material
comprising at least gelatinous material” as recited in claim 46;
6. Hong in combination with Kameyama teaches “after the removing
of the mask and while the uppermost surface of the semiconductor
substrate is devoid of material, providing a material into the
trench” as recited in claim 65.

PRINCIPLES OF LAW
The claims, of course, do not stand alone. Rather, they
are part of “a fully integrated written instrument” consisting
principally of a specification that concludes with the claims.
For that reason, claims “must be read in view of the
specification, of which they are a part.” . . . [T]he specification
“is always highly relevant to the claim construction analysis.
Appeal 2010-007682
Application 11/185,186

5
Usually, it is dispositive; it is the single best guide to the
meaning of a disputed term.”
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (citations
omitted).
To establish inherency, the extrinsic evidence “‘must make clear that
the missing descriptive matter is necessarily present in the thing described in
the reference, and that it would be so recognized by persons of ordinary
skill.’” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citation
omitted).
The Supreme Court stated that “‘[r]ejections 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.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
1. Does claim 71 lack enablement?
Appellants assert that the Examiner failed to provide a minimal
requirement of giving a reason of the uncertainty of the enablement of the
terms “forming right angle corners” in substrates without undue
experimentation (App. Br. 7).
We do not agree. The Examiner acknowledged that the drawings
show steps formed in right angles (Ans. 4). However, doubt may arise about
enablement because information is missing about one or more essential parts
or relationships between parts which one skilled in the art could not develop
without undue experimentation. In such a case, the Examiner should
specifically identify what information is missing and why one skilled in the
Appeal 2010-007682
Application 11/185,186

6
art could not supply the information without undue experimentation. See
MPEP § 2164.06(a).
The Examiner identified what information is missing by stating that
the Specification fails to teach one having ordinary skill in the art by what
method the right angle steps are formed and omitting any detail as to how to
form the intersection of the upper and lower portions to form right angles
(Ans. 4). The Examiner further noted that based on the prosecution history
it did not appear that a method such as anisotropic etching could form such
right angles (Ans. 17), thus indicating that one skilled in the art could not
supply the information without undue experimentation. Accordingly, the
Examiner did satisfy the minimal requirement of giving a reason for the
uncertainty of the enablement of “forming right angle corners” in substrates
without undue experimentation.
Accordingly, we affirm the Examiner’s rejection of claim 71 under 35
U.S.C. § 112, first paragraph, as lacking enablement.
2. Claims 41-45, 51, 52, 70, and 74
Appellants argue that Hong as evidenced by Subramanian and Horie
do not teach “out-gassing material from the insulative material into the void”
as recited in claim 41 (App. Br. 8-10).
We agree with Appellants’ argument. The Examiner relies on Hong
for the creation of a “void” (Ans. 19). The Examiner then relies on Horie
(col. 2, ll. 24-32) for teaching out-gassing during the formation of silicon
oxide films (Ans. 19). The Examiner also relies on Subramanian (col. 5, ll.
5-25) for teaching material trapped within the void wherein the contents are
primarily determined by the atmosphere in which the preliminary gap fill
dielectric layer is formed (Ans. 19). The Examiner concludes that in light of
Appeal 2010-007682
Application 11/185,186

7
Horie’s and Subramanian’s teaching, those skilled in the semiconductor art
would have easily concluded that the void of Hong, similar to the void of
Subramanian, inherently contains the out-gassing material from the
insulative material (id.).
Appellants rebut by stating that Specification paragraph [0048]
discloses that a particular gas within the voids can be the ambient present
during deposition of insulative material 40 “or”1 gases formed by out-
gassing from insulative material 40 (Reply Br. 4). Appellants note that one
is clearly distinctive from the other, and therefore a teaching to one is not a
teaching to the other (id.). In other words, Subramanian’s teaching (col. 5,
ll. 5-25) of material being trapped within the void wherein the contents are
primarily determined by the atmosphere in which the preliminary gap fill
dielectric layer is formed (Ans. 19) does not satisfy the claim limitation
which requires that the outgassing material is from the insulative material
and not the atmosphere (see Reply Br. 4).
Accordingly, we reverse the Examiner’s rejection of claim 41 and for
the same reasons the rejections of claims 42-45, 51, 52, 70, and 74.
3. Claims 62, 64, 72, and 73
Appellants argue that Hong as evidenced by Subramanian and Horie
does not teach a “trench comprising a plurality of steps in the semiconductor
substrate” because Hong teaches a single step extending into a
semiconductor substrate (App. Br. 14-15).

1 The Specification actually states “and/or” instead of just “or” as argued by
Appellants, but nonetheless there is a clear disclosure of the alternative “or”
and Appellants have claimed the alternative embodiment in claim 41.
Appeal 2010-007682
Application 11/185,186

8
We do not agree with Appellants’ arguments. We turn to Appellants’
Specification for the definition of a “semiconductor substrate” because the
Specification is the single best guide to the meaning of a disputed term. See
Phillips, 415 F.3d at 1315.
Appellants’ Specification defines the “semiconductor substrate” to
mean “any construction comprising semiconductive material, including, but
not limited to, bulk semiconductive materials such as a semiconductive
wafer (either alone or in assemblies comprising other materials thereon)” (¶
[0037]). Accordingly, Hong’s assembly of SiN layer, poly-Si Layer, and a
pad oxide layer on the silicon substrate constitutes a “semiconductor
substrate” consistent with the Specification. Furthermore, the trench
comprising a plurality of steps in the “semiconductor substrate” as shown in
Hong’s Figure 2 satisfies the disputed limitation of a “trench comprising a
plurality of steps in the semiconductor substrate” as recited in claim 62.
Accordingly, we affirm the Examiner’s rejection of claim 62 and for
the same reasons the Examiner’s rejections of dependent claims 64, 72, and
73 which were not separately argued.
4. Claims 58-61
Appellants argue that Sridhar as evidenced by Subramanian and Horie
do not teach “forming a void in the first material; and providing a second
material into the void” as recited in claim 58 (App. Br. 15).
We agree with Appellants that Sridhar teaches an unfilled tubular
volume 109 in an oxide 108 (col. 3, ll. 30-39) and the Examiner relied on the
unfilled tubular volume 109 to teach a void (App. Br. 15-16). Accordingly,
we agree with Appellants that the collective teachings of the references
demonstrate that the missing descriptive matter (filling the void/tubular
Appeal 2010-007682
Application 11/185,186

9
volume) is not necessarily present in the Sridhar processing reference as
Sridhar clearly teaches the contrary (see App. Br. 16). See Robertson, 169
F.3d at 745.
Thus, we reverse the Examiner’s rejection of claim 58 and for the
same reasons the rejection of claims 59-61.
5. Claims 46, 48, 49, 54, 55, 57, 71, and 75
Appellants argue that Hong in combination with Sandhu does not
teach the limitation of “filling the upper portions of the openings and leaving
voids within the lower portions of the openings, the electrically insulative
material comprising at least gelatinous material” as recited in claim 46.
We agree with Appellants’ argument. Sandhu teaches away from the
creation of voids and uses the sol gel to avoid “undesirable voids” (see
Sanhu ¶ [0007]). Accordingly, the combination does not reasonable teach
filling the voids with gelatinous material.
Accordingly, we reverse the Examiner’s rejection of claim 46 and the
rejections of claims 48, 49, 54, 55, 57, 71, and 75 for the same reasons.
6. Claims 65-68 and 76
Appellants argue that the rationale articulated by the Examiner of
modifying Hong in view of Kameyama “so that the surface of the insulating
film becomes flat” does not provide a rational underpinning to support the
legal conclusion of obviousness (App. Br. 22-23 (citation omitted)
(emphasis omitted)).
We agree with Appellants’ argument. The Supreme Court stated that
“‘[r]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
Appeal 2010-007682
Application 11/185,186

10
with some rational underpinning to support the legal conclusion of
obviousness.’” See KSR, 550 U.S. at 418 (citation omitted).
The Examiner states Kameyama (col. 1, ll. 30-35) teaches that when
the groove is filled by an insulating film it results in an insulating film that is
flat (Ans. 24-25). While the reference does teach a resulting flat film, the
Examiner has not articulated why a skilled artisan would want to modify
Hong with this teaching, or why the resulting flat film would be a desirable
modification. Accordingly, the Examiner did not provide a rational
underpinning to support the legal conclusion of obviousness.
Accordingly, we reverse the Examiner’s rejection of claim 65 and for
the same reasons the rejection of claims 66-68 and 76.

CONCLUSIONS
The Examiner did not err in finding that:
1. Claim 71 lacks enablement; and
2. Hong as evidenced by Subramanian and Horie teaches “a plurality
of steps in the semiconductor substrate” as recited in claim 62.
The Examiner erred in finding that:
3. Sridhar as evidenced by Subramanian and Horie teaches “forming
a void in the first material; and providing a second material into the
void” as recited in claim 58;
4. Hong as evidenced by Subramanian and Horie teaches “out-
gassing material from the insulative material into the void” as
recited in claim 41;
5. Hong in combination with Sandhu teaches the limitation of “filling
the upper portions of the openings and leaving voids within the
Appeal 2010-007682
Application 11/185,186

11
lower portions of the openings, the electrically insulative material
comprising at least gelatinous material” as recited in claim 46; and
6. Hong in combination with Kameyama teaches “after the removing
of the mask and while the uppermost surface of the semiconductor
substrate is devoid of material, providing a material into the
trench” as recited in claim 65.

DECISION
The Examiner’s decision rejecting claim 71 under 35 U.S.C. § 112 is
affirmed. The Examiner’s decision rejecting claims 62, 64, 72, and 73 is
affirmed. The Examiner’s decision rejecting claims 41-45, 46-49, 51, 52,
54, 55, 57, 58-61, 65-68, 70, 71, 74, 75 and 76 is reversed.
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)(iv).

AFFIRMED-IN-PART

babc