Ex Parte XuDownload PDFBoard of Patent Appeals and InterferencesApr 30, 200811102998 (B.P.A.I. Apr. 30, 2008) Copy Citation 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 ____________ Decided: April 30, 2008 ____________ 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)]. 2 Appeal 2007-4304 Application 11/102,998 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 3 Appeal 2007-4304 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 4 Appeal 2007-4304 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 5 Appeal 2007-4304 Application 11/102,998 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. 6 Appeal 2007-4304 Application 11/102,998 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 TROP PRUNER & HU, PC 1616 S. VOSS ROAD, SUITE 750 HOUSTON, TX 77057-2631 7 Copy with citationCopy as parenthetical citation