Ex Parte Xu

Board of Patent Appeals and Interferences

Apr 30, 2008

11102998 (B.P.A.I. Apr. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL XU
____________

Appeal 2007-4304
Application 11/102,998
Technology Center 2800
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Decided: April 30, 2008
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Before JOSEPH F. RUGGIERO, MARC S. HOFF, and KARL EASTHOM,
Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 23-30. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2007-4304
Application 11/102,998

Appellant’s invention relates to phase-change memory cells and,
particularly, to the formation of a trench using, as a mask, a conical structure
formed over a substrate. (Specification 8-9).
Claim 23 is illustrative of the invention and reads as follows:

23. A method comprising:

forming a conical structure over a substrate; and

using said conical structure as a mask to form a trench.

The Examiner relies on the following prior art references to show
unpatentability:
Takemura US 6,031,322 Feb. 29, 2000
Doan US 6,150,253 Nov. 21, 2000

Claims 23, 29, and 30 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Takemura.
Claims 24-28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Doan in view of Takemura.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Briefs and Answer for the respective details. Only
those arguments actually made by Appellant have been considered in this
decision. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived
[see 37 C.F.R. § 41.37(c)(1)(vii)].

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ISSUES
(i) Under 35 U.S.C § 102(b), does Takemura have a disclosure
which anticipates the invention set forth in claims 23, 29, and
30?
(ii) Under 35 U.S.C § 103(a), with respect to appealed claims 24-
28, would one of ordinary skill in the art at the time of the
invention have found it obvious to combine Doan with
Takemura to render the claimed invention unpatentable?

PRINCIPLES OF LAW
1. ANTICIPATION
It is axiomatic that anticipation of a claim under § 102 can be found if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326 (Fed. Cir. 1986) and Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir.
1984).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis
Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn.
Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d
1559, 1565 (Fed. Cir. 1992)). Anticipation of a patent claim requires a
finding that the claim at issue “reads on” a prior art reference. Atlas Powder
Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if
granting patent protection on the disputed claim would allow the patentee to
exclude the public from practicing the prior art, then that claim is
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Application 11/102,998

anticipated, regardless of whether it also covers subject matter not in the
prior art.”) (internal citations omitted).

2. OBVIOUSNESS
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127
S. Ct. 1727, 1741 (2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).

ANALYSIS
35 U.S.C. § 102(b) REJECTION

With respect to the 35 U.S.C. § 102(b) rejection of independent claim
23 based on the teachings of Takemura, the Examiner indicates (Ans. 3) how
the various limitations are read on the disclosure of Takemura. In particular,
the Examiner directs attention to the illustrations in Figures 7A-7E of
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Application 11/102,998

Takemura as well as the portion of the disclosure at column 8, lines 1-45 of
Takemura.
Appellant’s arguments in response assert that the Examiner has not
shown how each of the claimed features is present in the disclosure of
Takemura so as to establish a prima facie case of anticipation. According to
Appellant (App. Br. 9; Reply Br. 1-3), in contrast to the claimed invention,
the Takemura reference provides no disclosure of using a formed conical
structure as a mask for forming an isolation trench.
After reviewing the Takemura reference in light of the arguments of
record, we are in general agreement with Appellant’s position as stated in
the Briefs. Our interpretation of the disclosure of Takemura coincides with
that of Appellant, i.e., there is simply no disclosure in Takemura of the use
of the formed conical structure 12 as a mask in the formation of trench 16.
As pointed out by Appellant (App. Br. 9; Reply Br. 1-2), the only reference
to a “mask” in Takemura’s description of Figures 7A-7E is to mask film 31
which is etched to form a mask pattern which is used in the formation of the
conical structure 12.
Further, while the Examiner refers (Ans. 7) to a “small pattern”
formed in the side of conical structure 12 of Takemura which acts as a mask
in the formation of trench 16, we find no disclosure in Takemura of any such
pattern portion in conical structure 12. It is apparent to us that, as pointed
out by Appellant (Reply Br. 2), to whatever extent an undescribed mask may
be used by Takemura in the formation of trench 16, any such mask is not
disclosed as being part of the formed conical structure as claimed.
We recognize that the Examiner (Ans. 8) has urged that Appellant has
asserted a more restrictive interpretation of the claimed term “mask” than
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that described in Appellant’s Specification. It is true that in the portion of
the Specification (page 8, line 22 through page 9, line 2) referenced by
Appellant (Reply Br. 2) as describing the claimed mask function, the
disclosed function of the conical structure 12b is more accurately described
as an “etch stop” which impedes the forward progression of any etch.
However, even under the broader interpretation of the term “mask,” i.e., an
“etch stop,” we find nothing in Takemura’s disclosure of conical structure
12 which would satisfy even this broader interpretation.
In view of the above discussion, since all of the claim limitations are
not present in the disclosure of Takemura, we do not sustain the Examiner’s
35 U.S.C. § 102(b) rejection of appealed independent claim 23, nor of
claims 29 and 30 dependent thereon.

35 U.S.C. § 103(a) REJECTION
We also do not sustain the Examiner’s obviousness rejection of
dependent claims 24-28 based on the combination of Doan and Takemura.
The Examiner has applied the Doan reference to address the tapered
electrode feature of these dependent claims. We find nothing in the
disclosure of Doan, however, which overcomes the innate deficiencies of the
Takemura reference discussed supra.

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CONCLUSION
In summary, we have not sustained either of the Examiner’s rejections
of the claims on appeal. Therefore, the decision of the Examiner rejecting
claims 23-30 is reversed.

REVERSED

tdl/gw

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