Ex Parte Son et al

Board of Patent Appeals and Interferences

Aug 15, 2002

08675865 (B.P.A.I. Aug. 15, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JEON-HWAN SON, SANG-DON LEE
and CHOONGCHEONGBUK-DO
____________
Appeal No. 2000-0260
Application No. 08/675,865
____________
ON BRIEF
____________
Before THOMAS, RUGGIERO, and LALL, Administrative Patent Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 1, 3-10, and 12-17, which are all of the claims pending in
the present application. Claims 2 and 11 have been canceled. The
amendments filed June 3, 1998 and November 21, 2001 after final
rejection were approved for entry by the Examiner.
The claimed invention relates to a method of fabricating a
field effect transistor in which a defined active area of a
substrate is doped with phosphorus and arsenic dopants, the arsenic
Appeal No. 2000-0260
Application No. 08/675,865
2
dopant being doped at a substrate depth not less than or greater
than a depth of the phosphorus dopant in the substrate. A gate is
formed on the active area with source and drain regions formed
adjacent to the gate.
Claim 1 is illustrative of the invention and reads as follows:
1. A method of fabricating a field effect transistor comprising
the steps of:
a)doping an area of a substrate with phosphorus and arsenic
dopants, wherein the arsenic dopant is doped at a depth in the
substrate greater than a depth of the phosphorus dopant in the
substrate.
b) forming a gate on the area; and
c) forming source and drain regions adjacent to the gate in
the area.
The Examiner relies on the following prior art:
Lee 5,548,143 Aug. 20, 1996
(effectively filed Apr. 29, 1994)
Claims 1, 3-10, and 12-17 stand rejected under 35 U.S.C.
§ 112, first paragraph, as being based on an inadequate disclosure.
Claims 1, 5, 7, 8, 10, 12, 16, and 17 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Lee. Claims 3, 4, 6, 9,
and 13-15 stand finally rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee.
Appeal No. 2000-0260
Application No. 08/675,865
1 The original Appeal Brief was filed August 5, 1998 (Paper no. 15). In
response to the original Examiner’s Answer dated December 31, 1998 (Paper No.
16), a Reply Brief was filed February 23, 1999 (Paper No. 17), which was
acknowledged and entered by the Examiner as indicated in the communication
dated May 25, 1999 (Paper No. 18). In response to a Notification of Non-
compliance, issued by the Examiner as a result of a remand from the Board, a
revised Appeal Brief was filed November 21, 2001 (Paper No. 21), and a further
Examiner’s Answer was submitted dated February 27, 2002 (Paper No. 23). Our
references in this decision are to the latest filed Brief (Paper No. 21) and
Answer (Paper No. 23).
3
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the Briefs1 and Answer for their
respective details.
OPINION
We have carefully considered the subject matter on appeal, the
rejections advanced by the Examiner, the arguments in support of
the rejections and the evidence of anticipation and obviousness
relied upon by the Examiner as support for the prior art
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellants’ 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 Appellant’s specification in this application describes the
claimed invention in a manner which complies with the requirements
Appeal No. 2000-0260
Application No. 08/675,865
4
of 35 U.S.C. § 112. We are also of the view that the Lee reference
does not fully meet the limitations of claims 1, 5, 7, 8, 10, 12,
16, and 17. It is further our opinion 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 claims 3-4, 6, 9, and 13-15.
Accordingly, we reverse.
We consider first the Examiner’s rejection of claims 1, 3-10,
and 12-17, all of the appealed claims, under the “written
description” requirement of the first paragraph of 35 U.S.C. § 112.
The function of the written description requirement of the first
paragraph of 35 U.S.C. § 112 is to ensure that the inventor has
possession, as of the filing date of the application relied on, of
the specific subject matter later claimed by him. In re Wertheim,
541 F. 2d 257, 262, 191 USPQ 90, 96 (CCPA 1976).
In establishing a basis for a rejection under the written
description requirement of the statute, the Examiner has the
initial burden of presenting evidence or reasons why persons
skilled in the art would not recognize in an applicant’s disclosure
a description of the invention defined by the claims. Wertheim,
541 F.2d at 265, 191 USPQ at 98. After reviewing the arguments of
Appeal No. 2000-0260
Application No. 08/675,865
5
record, however, it is our opinion that the Examiner has not
provided sufficient reasons or evidence to satisfy such burden.
The genesis of the Examiner’s assertion of the lack of
compliance with the statutory written description requirement was
the amendment to independent claim 1 which now recites that “...
arsenic dopant is doped at a depth in the substrate greater than a
depth of the phosphorus dopant....” Independent claim 12 was also
amended to require that arsenic is implanted to a depth in the
substrate “... not less than a depth” of the phosphorus. In the
Examiner’s view (Answer, page 3) the amended language has no
support in the original disclosure since the original disclosure is
completely silent about the relative substrate depths of the doped
arsenic and phosphorus.
After reviewing Appellants’ originally filed disclosure, as
well as the arguments of record, we are in agreement with
Appellants’ position as stated in the Briefs. While the Examiner
is correct in the assertion, one with which Appellants agree, that
the originally filed specification has no explicit statements
related to the relative substrate depths of the arsenic and
phosphorus dopants, it is our view that Appellants’ original
disclosure nonetheless provides a clear indication of support for
the language of independent claims 1 and 12. As pointed out by
Appeal No. 2000-0260
Application No. 08/675,865
2 S. Wolf and R.N. Tauber, “Silicon Processing for the VLSI Era,”
Process Technology, Vol. 1, page 290 (1986).
6
Appellants, “... the subject matter of a claim added to an
application after filing need not be literally described in the
specification to satisfy the written description requirement of
§ 112, first paragraph.” (Brief, page 9, citing In re Lukach, 442
F.2d 967, 969, 169 USPQ 795 (CCPA 1971). We further agree with
Appellants (id.), that “... to interpret what is inherently
described in a specification, the specification must be read
through the eyes of one skilled in the relevant art.”
Our review of Appellants’ original disclosure reveals that,
while the relative substrate depth relationship of arsenic and
phosphorus is not explicitly stated, the ion implantation energy of
each is clearly set forth (specification, page 4, lines 20-33).
Further, in our view, the evidence provided by Appellants provides
clear support for their position that the skilled artisan would
recognize and appreciate that the variation of ion implantation
energy results in a variation of the depth that doping ions
penetrate into a substrate, i.e., the greater the energy, the
greater the penetration depth. As set forth in the Wolf and Tauber
document2 (presented by Appellants in the December 23, 1997
amendment and attached as Appendix B to Appellants’ Brief), the
Appeal No. 2000-0260
Application No. 08/675,865
7
chart of Figure 7 clearly indicates the relationship of penetrating
substrate depth of arsenic and phosphorus ions to implantation
energy. A comparison of this chart with the implantation energy
ranges in the originally filed disclosure, and which also appear in
originally filed claims 3, 4, and 15, provide support for the
penetration depth relationship of arsenic and phosphorus that
appears in appealed independent claims 1 and 12.
In view of the above discussion, it is our opinion, under the
factual situation presented in the present case, that Appellants
have satisfied the statutory written description requirement
because they were clearly in possession of the invention at the
time of filing of the application. Therefore, we do not sustain
the rejection of claims 1, 3-10, and 12-17 under the first
paragraph of 35 U.S.C. § 112.
We consider next the Examiner’s rejection of claims 1, 5, 7,
8, 10, 12, 16, and 17 under 35 U.S.C. § 102(e) as being anticipated
by Lee. Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as well as
disclosing structure which is capable of performing the recited
functional limitations. RCA Corp. v. Applied Digital Data Systems,
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.); cert.
Appeal No. 2000-0260
Application No. 08/675,865
8
dismissed, 468 U.S. 1228 (1984); W.L. Gore and Associates, Inc. v.
Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984).
With respect to independent claims 1 and 12, a review of the
Examiner’s stated position on the issue of anticipation (Answer,
page 8) indicates an inexplicable reliance on the Exxaminer’s
position on the issue of the adequacy of the disclosure discussed
supra. It is self evident that the standards for establishing a
rejection under the first paragraph of 35 U.S.C. § 112 are
completely different from those required for supporting a rejection
under 35 U.S.C. § 102. In this regard, the Examiner has never
attempted to make a showing of how all of the limitations in
independent claims 1 and 12 are present in the disclosure of Lee.
Further, our review of the disclosure of Lee makes it apparent
that any attempt to read the limitations of appealed claims 1 and
12 on the Lee reference must fail. As set forth in Lee (Figure 1
and the accompanying description at column 4, lines 8-16), the
arsenic ions 20 which form the diffusion barrier region 22 are
implanted at a shallower depth than the region 18 containing the
phosphorus, the exact opposite of what is being claimed in appealed
independent claims 1 and 12. Accordingly, since all of the claim
limitations are not present in the disclosure of Lee, we do not
Appeal No. 2000-0260
Application No. 08/675,865
9
sustain the Examiner’s 35 U.S.C. § 102(e) rejection of independent
claims 1 and 12, nor of claims 5, 7, 8, 10, 16, and 17 dependent
thereon.
Turning to a consideration of the Examiner’s obviousness
rejection of claims 3, 4, 6, 9, and 13-15 based on Lee alone, we do
not sustain this rejection as well. As with the 35 U.S.C. § 102(e)
rejection discussed supra, the Examiner has improperly relied on
the rationale expressed in the rejection under the first paragraph
of 35 U.S.C. § 112 as the basis for the obviousness rejection under
35 U.S.C. § 103(a). For all of the reasons previously discussed,
however, the Examiner has failed to establish a prima facie case of
obviousness since Lee lacks any teaching or suggestion of
formulating a field effect transistor region in which arsenic is
doped at substrate depth greater than phosphorus (appealed
independent claim 1), or one in which arsenic is doped at a depth
not less than phosphorus (independent claim 12).
Appeal No. 2000-0260
Application No. 08/675,865
10
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, 3-10, and 12-17 is reversed.
REVERSED

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
JFR/lp
Appeal No. 2000-0260
Application No. 08/675,865
11
THE LAW OFFICE OF FLESHNER & KIM
P.O. BOX 221200
CHANTILLY, VA 20153
Letty
JUDGE RUGGIERO
APPEAL NO. 2000-0260
APPLICATION NO. 08/675,865
APJ RUGGIERO
APJ THOMAS
APJ LALL
DECISION: REVERSED
PREPARED: Aug 5, 2003
OB/HD
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