Ex Parte Xu et al

Board of Patent Appeals and Interferences

Sep 27, 2005

09976641 (B.P.A.I. Sep. 27, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DANIEL XU and TYLER A. LOWERY
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Appeal No. 2005-2247
Application No. 09/976,641
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ON BRIEF
____________
Before JERRY SMITH, DIXON, and NAPPI, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 11-14
and 16-30, which are all of the claims pending in this application.
We REVERSE.
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Application No. 09/976,641
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BACKGROUND
Appellants’ invention relates to reducing leakage currents in memories with
phase-change material. An understanding of the invention can be derived from a
reading of exemplary claim 11, which is reproduced below.
11. A memory cell comprising:
a substrate;
a phase-change material over said substrate;
a buried line of a first conductivity type formed in said substrate, said
buried line including a more lightly doped region over a more heavily doped
region and a more lightly doped region under said more heavily doped region;
a region of a second conductivity type opposite said first conductivity type
over said line and under said phase-change material; and
a pair of trenches on either side of said buried line extending past said
buried line and said region of a second conductivity type into said substrate
under said buried line.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Holmberg et al. (Holmberg) 4,599,705 Jul. 08, 1986
Ovshinsky 5,359,205 Oct. 25, 1994
Slotboom et al. (Slotboom) 5,502,326 Mar. 26, 1996
Chang 6,015,995 Jan. 18, 2000
(filed Feb. 27, 1998)
Appeal No. 2005-2247
Application No. 09/976,641
1 Here, we note that the rejection has been modified from that set forth in the final rejection to add
the teachings of Slotboom. Since appellants have not disputed this new grounds of rejection, we will
review the rejection as set forth in the answer.
3
Claims 11, 12 and 16-30 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ovshinsky in view of Chang and Slotboom.1
Claims 13 and 14 stand rejected under 35 U.S.C. § 103 as unpatentable over
Ovshinsky in view of Chang and Slotboom further in view of Holmberg.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellants regarding the above-noted rejections, we make reference to the answer
(mailed June 23, 2004) for the examiner's reasoning in support of the rejections, and to
the brief (filed May 03, 2004) and reply brief (filed August 03, 2004) for appellants’
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
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35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that the reference teachings would appear to be
sufficient for one of ordinary skill in the relevant art having the references before him to
make the proposed combination or other modification. See In re Lintner, 458 F.2d
1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that the
claimed subject matter is prima facie obvious must be supported by evidence, as
shown by some objective teaching in the prior art or by knowledge generally available to
one of ordinary skill in the art that would have led that individual to combine the relevant
teachings of the references to arrive at the claimed invention. See In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based on
§ 103 must rest on a factual basis with these facts being interpreted without hindsight
reconstruction of the invention from the prior art. The examiner may not, because of
doubt that the invention is patentable, resort to speculation, unfounded assumption or
hindsight reconstruction to supply deficiencies in the factual basis for the rejection. See
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967), cert.
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denied, 389 U.S. 1057 (1968). Our reviewing court has repeatedly cautioned against
employing hindsight by using the appellant's disclosure as a blueprint to reconstruct the
claimed invention from the isolated teachings of the prior art. See, e.g., Grain
Processing Corp. v. American Maize-Prods. Co., 840 F.2d 902, 907, 5 USPQ2d
1788, 1792 (Fed. Cir. 1988).
When determining obviousness, “the [E]xaminer can satisfy the burden of
showing obviousness of the combination ‘only by showing some objective teaching in
the prior art or that knowledge generally available to one of ordinary skill in the art would
lead that individual to combine the relevant teachings of the references.’” In re Lee,
277 F.3d 1338, 1343, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002), citing In re Fritch,
972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). “Broad conclusory
statements regarding the teaching of multiple references, standing alone, are not
‘evidence.’” In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999). “Mere denials and conclusory statements, however, are not sufficient to establish
a genuine issue of material fact.” Dembiczak, 175 F.3d at 999-1000,
50 USPQ2d at 1617, citing McElmurry v. Arkansas Power & Light Co., 995 F.2d
1576, 1578, 27 USPQ2d 1129, 1131 (Fed. Cir. 1993).
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Further, as pointed out by our reviewing court, we must first determine the scope
of the claim. “[T]he name of the game is the claim.” In re Hiniker Co., 150 F.3d
1362,1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Therefore, we look to the
language of independent claim 11 which recites “a buried line of a first conductivity type
formed in said substrate, said buried line including a more lightly doped region over a
more heavily doped region and a more lightly doped region under said more heavily
doped region; a region of a second conductivity type opposite said first conductivity type
over said line and under said phase-change material.” Here, we find that the language
of independent claim 11 recites four regions formed in the substrate.
We find that each of Ovshinsky and Chang teach three separate regions of
varied conductivity formed in the substrate and formed in epitaxial layers. While the
examiner identifies at page 5 of the answer that the specific orientations of conductivity
regions would have prevented leakage current between the n+ conductive lines 32 and
the p- substrate 20 in the three layers, the examiner merely concludes that it would
have been obvious to one of ordinary skill in the art at the time of the invention to have
included this teaching into the manufacture of Ovshinsky. Moreover, the examiner
maintains that “Chang teaches that pn diodes can alternatively be formed exclusively in
bulk substrates without the inclusion of an epi layer, as opposed to being formed in the
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combination of bulk regions overlying epi regions of a substrate.” (Answer at page 5.)
The examiner identifies no direct or express support for this finding, and we find from
the Figures 2A-F of Chang that all of the regions of conductivity are “in” the substrate as
the examiner maintains. Furthermore, even if we assume that the Chang does teach or
fairly suggest the inclusion of all the layers of conductivity in the substrate, we are left
with the mere assertion that it would have been obvious to one of ordinary skill in the art
at the time of the invention to desire to reduce the leakage current and to add the
additional lightly doped region used in the n type regions to the combination of buried
regions and epi- regions taught by Ovshinsky.
Appellants argue that neither Ovshinsky or Chang teach the formation of an
lightly doped region over a heavily doped region where both are formed in the substrate.
(Brief at page 5.) We agree with appellants that neither of Ovshinsky or Chang teach or
fairly suggest this aspect of the claimed invention and the examiner does not rely upon
the teachings of Slotboom to teach or suggest this feature of the claimed invention.
Appellants argue that there is no suggestion to modify both of the three layer
configurations of Ovshinsky and Chang to form a four layer structure. (Reply brief at
pages 2 et seq.) We agree with appellants.
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Form our review of the examiner’s statement of the rejection and the relevant
teachings expressly set forth in the prior art references, we conclude the examiner has
found most of individual parts of the claimed invention and attempts to reconstruct the
claimed invention from the known parts. We find the examiner’s rejection to be based
upon improper hindsight reconstruction where many of the combinations of teachings
require a number of further modifications. While these modification may have been
within the level of skill in the relevant art, we find that the examiner has not met the
initial burden of showing a teaching or convincing line of reasoning why it would have
been obvious to one of ordinary skill in the art at the time of the invention to have made
that further modification after the combination such as to form all the various regions of
conductivity in the substrate rather than to additionally use epitaxial layers. Therefore,
we find that the examiner has not established the initial prima facie case of
obviousness of the invention recited in independent claim 11. Therefore, we cannot
sustain the rejection of independent claim 11 and its dependent claims. Similarly, we
cannot sustain the rejection of independent claim 21 and its dependent claims.
Additionally, we do not find that Holmberg remedies the deficiencies in the base
combination. Therefore, we cannot sustain the rejection of dependent claims 13 and
14.
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CONCLUSION
To summarize, the decision of the examiner to reject claims 11-14 and 16-30
under 35 U.S.C. § 103 is REVERSED.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )
JLD/vsh
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Application No. 09/976,641
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