Ex Parte Wu

Patent Trial and Appeal Board

Mar 26, 2015

11737961 (P.T.A.B. Mar. 26, 2015)

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.
11/737,961 04/20/2007 Chao-I Wu JCLA22334 6593
23900 7590 03/26/2015
J C PATENTS
4 VENTURE, SUITE 250
IRVINE, CA 92618
EXAMINER
PAGE, DALE E
ART UNIT PAPER NUMBER
2815
MAIL DATE DELIVERY MODE
03/26/2015 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 CHAO-I WU

____________

Appeal 2013-003431
Application 11/737,961
1

Technology Center 2800
____________

Before MICHAEL P. COLAIANNI, JEFFREY W. ABRAHAM, and
KIMBERLY J. McGRAW, Administrative Patent Judges.

McGRAW, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–9 and 44–49. Br. 4. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1
According to Appellant, the real parties in interest are the inventor, Chao-I
Wu, and MACRONIX International Co., Ltd. Br. 1.

Appeal 2013-003431
Application 11/737,961
2
BACKGROUND
Appellant’s invention is directed to memory structures. Spec. ¶ 1;
Claim App’x. Claims 1 and 44 are independent. Claim 1, which is the focus
of Appellant’s brief, is reproduced below:

1. A memory structure, comprising:
a substrate;
a charge trapping layer, disposed directly on a top surface
of the substrate;
a block layer, disposed directly on the charge trapping
layer;
a conducting layer, disposed directly on the block layer,
and
two doped regions, respectively disposed in the substrate
on the two sides of the conducting layer.

Br. 11, Claim App’x.

THE REJECTIONS
Claims 1–4, 6–9, 44–45, 47, and 49 are rejected under 35
U.S.C. § 102(b) as anticipated by DeKeersmaecker (US 4,217,601, issued
Aug. 12, 1980). Ans. 3.
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
DeKeersmaecker and Fan (US 6,512,696 B1, issued Jan. 28, 2003). Id. at 5.
Claims 5 and 46 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over DeKeersmaecker and Yang (US 2006/0060910 A1,
published Mar. 23, 2006). Ans. 6.
Claim 48 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Fan and Miyazaki (US 6,566,794 B1, issued May 20, 2003). Id.
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Application 11/737,961
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Claims 1–9, 44–45, 47, and 49 are rejected under 35 U.S.C. § 102(b)
as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Fan. Id. at 7.
Claims 5 and 46 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Fan and Yang. Id. at 9.

ANALYSIS

We have reviewed the arguments presented by Appellant. However,
we are in agreement with the Examiner that the claimed subject matter is
either anticipated or would have been obvious over the cited art.
Accordingly, we sustain the Examiner’s rejections for essentially those
reasons expressed in the Answer, including the Response to Argument
section, and we add the following primarily for emphasis.
Appellant argues that DeKeersmaecker does not anticipate
independent claims 1 or 44 because DeKeersmaecker’s Si3N4 layer is not a
block layer as required by the claims. Specifically, Appellant argues that
DeKeersmaecker’s silicon nitride layer is an electron or hole injecting layer
(Br. 4) or a tunneling layer for facilitating the injection of holes or electrons
from the gate electrode into the thick SiO2 charge trapping layer (Br. 5).
Appellant asserts that because DeKeersmaecker’s thin silicon nitride layer is
intended to allow charges to pass through quickly, the layer does not “block
the passage of charges” and therefore cannot be a block layer. Br. 5, citing
Spec. ¶ 57 (stating that the block layer must “block the passage of charges”).
This argument is unpersuasive. Claims 1 and 44 are apparatus claims.
“[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed.
Appeal 2013-003431
Application 11/737,961
4
Cir. 1990). Choosing to define an element functionally, i.e., by what it does,
carries with it a risk. Where there is reason to conclude that the structure of
the prior art is inherently capable of performing the claimed function, the
burden shifts to the applicant to show that the claimed function patentably
distinguishes the claimed structure from the prior art structure. See In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d
212, 215 (CCPA 1981). We find that the Examiner has provided a reason to
conclude that the structure of the prior art is inherently capable of
performing the recited claim function. In particular, both DeKeersmaecker
and the Appellant’s specification state that the block layer can be made of
silicon nitride. See DeKeersmaecker 3:50–55 (stating that SiN is desirable
because it has a high electric constant which would block charges); Ans. 12.
As the materials used are the same in the prior art and the claimed invention,
the Examiner has presented a prima facie case of anticipation. Appellant has
not provided sufficient evidence to rebut the Examiner’s finding.
Moreover, the claims do not recite any specific magnitude of
blocking. The Examiner explicitly found, and Appellant does not rebut, that
the silicon nitride layer of DeKeersmaecker will block charges up to a
certain point, at which time some, but not all, of the charges will tunnel
through the layer. See Ans. 11–12. Thus, even if the silicon nitride layer of
DeKeersmaecker is construed as a tunneling layer, the layer would still meet
the limitations of a block layer as it will block a certain charge level. Ans.
12. Therefore, we sustain the Examiner’s rejection of independent claims 1
and 44 as anticipated by DeKeersmaecker.
Appellant also argues that Fan does not anticipate or render obvious
the independent claims because Fan does not teach a charge trapping layer
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Application 11/737,961
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as required by the claims. This argument is also not persuasive. The
Examiner found that charges are trapped between layers 14 and 15 and
because layers 14 and 15 are both made of the same material, the layers
teach or would have rendered obvious a single layer that traps charges. Ans.
14. Appellant has not provided any persuasive evidence to rebut this
finding. We disagree with Appellant’s argument that construing layers 14
and 15 to be one charge trapping layer would defeat the purpose of Fan.
Appellant asserts that Fan teaches providing a bottom tunneling layer with a
lower potential barrier such that the electrons could jump over the potential
barrier of bottom tunneling layer 14 into the intermediate silicon nitride
layer 15 and become trapped. Br. 7. However, in Appellant’s device, the
charge must also tunnel through some portion of the charge trapping layer
before being trapped. Ans. 14. In Fan, the trapping of the charge is still
occurring at layer 15. Thus, there is no change in the way the device
functions. For this additional reason, we sustain the Examiner’s rejection of
independent claims 1 and 44.
Appellant does not present separate arguments directed to the
Examiner’s rejection of dependent claims 2–9, 45 or 49 under § 102(b) over
DeKeersmaecker or under § 102(b), or in the alternative under § 103(a) over
Fan. As a consequence, we also sustain the Examiner’s rejection of these
claims.
Appellant also argues that the Examiner erred in rejecting claim 5 as
obvious over DeKeersmaecker in view of Fan, stating that DeKeersmaecker
teaches use of a thick doped silicon oxide layer as a charge trapping layer
and thus teaches away from using SiN as a charge trapping layer. App. Br.
8. This argument is not persuasive. DeKeersmaecker also teaches use of a
Appeal 2013-003431
Application 11/737,961
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“wide energy band insulator” for use as the charge trapping layer.
DeKeersmaecker 3:52. The Examiner found, and Appellant does not
dispute, that silicon nitride is a wide energy band gap insulator and therefore
would have been obvious to use it as the charge trapping layer. Ans. 15–16.
Appellant does not present any additional arguments as to the
rejection of claims 5 and 46 under §103(a) as unpatentable over
DeKeersmaecker and Yang (Ans. 6), the rejection of claims 5 and 46 over
Fan and Yang (Ans. 9), or the rejection of claim 48 over Fan and Miyazaki
(Ans. 9). As such, we also sustain the Examiner’s rejections of these claims.

CONCLUSION
The Examiner’s rejection of claims 1–4, 6–9, 44–45, 47, and 49 under
35 U.S.C. § 102(b) as anticipated by DeKeersmaecker is affirmed.
The Examiner’s rejection of claims 1–4, 6–9, 44–45, 47, and 49 under
35 U.S.C. § 102(b) as anticipated by, or, in the alternative, under 35
U.S.C. § 103(a) as obvious over Fan is affirmed.
The Examiner’s rejections of claims 5, 46, 48 under 35 U.S.C. §
103(a) are affirmed.
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