Ex Parte Yamazaki et al

Patent Trial and Appeal Board

Nov 28, 2014

12076994 (P.T.A.B. Nov. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/076,994 03/26/2008 Shunpei Yamazaki 0756-8257 8799
31780 7590 11/28/2014
Robinson Intellectual Property Law Office, P.C.
3975 Fair Ridge Drive
Suite 20 North
Fairfax, VA 22033
EXAMINER
SHOOK, DANIEL P
ART UNIT PAPER NUMBER
2898
MAIL DATE DELIVERY MODE
11/28/2014 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 SHUNPEI YAMAZAKI and HIDETO OHNUMA
______________

Appeal 2012-012483
Application 12/076,994
Technology Center 2800
_______________

Before CHARLES F. WARREN, TERRY J. OWENS, and
WESLEY B. DERRICK, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board under 35 U.S.C. § 134(a) from the
decision of the Primary Examiner finally rejecting 33, 38, 47, 50, 53, 58, 60,
63, and 65 – 82 under 35 U.S.C. § 103(a): claims 33, 38, 53, 58, 65, 67, and
69 over Fukuda (US 2005/0115642 A1) and Joly (US 7,300,853 B2); claims
47, 50, 60, 63, 66, 68, and 70 over Takahashi (US 5,618,739), Fukuda, and
Joly; claims 71 and 73 over Fukuda, Joly, and Henley (US 2007/0032044
A1); claims 72 and 74 over Takahashi, Fukuda, Joly, and Henley; claims 75
and 77 over Fukuda, Joly, and Mitani (US 6,245,645 B1); claims 76 and 78
over Takahashi, Fukuda, Joly, and Mitani; claims 79 and 81 over Fukuda,
Joly, and Cites (US 2007/0281440 A1); and claims 80 and 82 over
Takahashi, Fukuda, Joly, and Cites. Appeal Br. 7; Ans. 3, 7, 12, 13, 14, 15,
16, 18. We have jurisdiction. 35 U.S.C. § 6(b).
An oral hearing was held November 20, 2014.
Appeal 2012-012483
Application 12/076,994
2
We affirm the decision of the Primary Examiner.
Claim 33, as illustrated by Specification Figures 5A – 5D, illustrates
Appellants’ invention of a method for manufacturing a Silicon On Insulator
(SOI) substrate (Spec. ¶¶ 0002, 0045 – 0057; see App. Br. 4), and is
representative of the claims on appeal:
33. A method for manufacturing an SOI substrate (102), comprising
the steps of:
forming a brittle layer (103) in a single-crystalline semiconductor
substrate (101) having an entire thickness of 50 µm or less so that a single-
crystalline semiconductor layer (102) is provided on the brittle layer (103);
forming a cap layer (123) over the single-crystalline semiconductor
layer (102);
bonding the single-crystalline semiconductor layer (102) and a
supporting substrate (100) to each other with the cap layer (123) interposed
therebetween; and
separating the single-crystalline semiconductor layer (102) from the
single-crystalline semiconductor substrate (101) at the brittle layer (103) so
that the single-crystalline semiconductor layer (102) is formed over the
supporting substrate (100) with the cap layer (104) interposed therebetween.
Appeal Br. 18 (App’x A Pending Claims) (numerals and emphasis supplied).
Appellant argues the grounds of rejection on independent claims 33,
47, 53, and 60 as a group. App. Br. 8 – 10, 15. Thus, we decide this appeal
based on claim 33. 37 C.F.R. § 41.37(c)(1)(vii).

OPINION
The issues raised by the Examiner and Appellants entail the
interpretation of the terms of the preamble and limitations of claim 33. We
give the claim terms the broadest reasonable interpretation consistent with
the Specification as it would be interpreted by one of ordinary skill in the art.
See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259 – 60 (Fed. Cir.
Appeal 2012-012483
Application 12/076,994
3
2010); In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007);
In re Morris, 127 F.3d 1048, 1054 – 55 (Fed. Cir. 1997); In re Zletz, 893
F.2d 319, 321 – 22 (Fed. Cir. 1989). We determine the disputed term
“substrate” is used in the plain language of claim 33 in three different
contexts. First, the preambular language specifies a method resulting in “an
SOI substrate,” that is, a “‘silicon on insulator’ substrate.” We find
Appellants disclose in the Specification that an “SOI substrate” can have
SOI layer 102 as the top layer of a multi-layer construct which includes
“supporting substrate 100,” and that one skilled in the art would recognize
from the disclosure in the Specification that the SOI layer 102 serves as a
single layer “substrate” for an etching reaction “in” this layer which changes
its structure, and for the formation of a coating layer “on” this layer in a
method for forming a semiconductor device. Spec. ¶¶ 0057, 0069 – 0071,
Figs. 5D, 6A.
Second, and in similar respect, we determine that the plain language
of the first specified step of the claimed method requires that any “brittle
layer” is formed “in” any “single-crystalline semiconductor substrate”
having a “thickness of 50 µm or less.” We further determine it is clear from
the claim language that the formation of the brittle layer “in” this
“single-crystalline semiconductor substrate” changes the structure of this
“substrate” to a multi-layer construct that has, in sequence, a different
formed “single-crystalline semiconductor substrate,” having a thickness less
than the reacted “single-crystalline semiconductor substrate;” the “brittle
layer” is provided on the formed “single-crystalline semiconductor
substrate;” and “a single-semiconductor layer” is “provided on” the brittle
layer. See Spec. ¶¶ 0047, 0054, Fig. 5A.
Appeal 2012-012483
Application 12/076,994
4
We determine that the plain language of the second step of the
claimed method specifies that the formed “single-semiconductor layer”
serves as a substrate for the formation of any “cap layer” “over” that layer,
resulting in a multi-layer construct which has the formed “single-crystalline
semiconductor substrate,” the “brittle layer,” the formed “single-crystalline
semiconductor layer,” and the “cap layer” formed on the latter layer. Spec.
¶¶ 0048, 0050, Fig. 5B.
And third, we determine that the plain language of the third and fourth
steps specify “bonding” in any manner the multi-layer construct having the
formed “single-crystalline semiconductor substrate,” the “brittle layer,” the
formed “single-semiconductor layer” and the “cap layer” via the “cap layer”
to any manner of “a supporting substrate,” by separating in any manner the
newly formed multi-layer construct which has a “substrate” at top and
bottom, “at” the “brittle layer” to form two multi-layer constructs: the first
multi-layer construct has the formed “single-crystalline semiconductor
substrate” and the “brittle layer” thereon; and the second multi-layer
construct has at least the “supporting substrate,” the “cap layer” on the
“supporting substrate,” and the formed “single-semiconductor layer” on the
“cap layer.” We further determine that as used in claim 33 and in the
Specification, the “supporting substrate” must be a substrate capable of
bonding with the “cap layer” in any manner before providing the
“supporting” function. Spec. ¶¶ 0051, 0054, 0055, 0057, Figs. 5C, 5D.
We are thus of the opinion that, contrary to Appellants’ position, the
term “substrate” is used in claim 33 and in the Specification to describe a
material that alone or as part of multi-layer construct can enter into a
reaction or can be coated, wherein the reacted substrate can be further
reacted or coated, and the coated substrate can provide a “supporting”
Appeal 2012-012483
Application 12/076,994
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function in a multi-layer construct, which usage comports with the manner
in which the term “substrate” is employed in the chemical arts. See, e.g.,
Hawley’s Condensed Chemical Dictionary 1052 (14th ed., Richard J. Lewis,
Sr., revisor. 2001); McGraw-Hill Dictionary of Scientific and Technical
Terms 1948 (5th ed., Sybil P. Parker, ed. 1994); The American Heritage
Dictionary of the English Language 1727 (4th ed. 2000). App. Br. 11,
13-14; Reply Br. 3-4.
Accordingly, we determine that the method for manufacturing an SOI
substrate comprising at least the steps specified in claim 33 include methods
in which a brittle layer is formed “in” a “single-crystalline semiconductor
substrate,” which has a thickness of 50 µm or less, wherein the “single-
crystalline semiconductor substrate” is formed on and is supported by a
substrate. Indeed, the open-ended transitional term “comprising” does not
exclude other steps and materials. See, e.g., In re Crish, 393 F.3d 1253,
1257 (Fed. Cir. 2004)(“[I]t is well-established that “‘[c]omprising’ is a term
of art used in claim language which means that the named elements are
essential, but other elements may be added and still form a construct within
the scope of the claim.’” (quoting Genentech, Inc. v. Chiron Corp., 112 F.3d
495, 501 (Fed. Cir. 1997)); Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64
F.3d 1553, 1555 (Fed. Cir. 1995) (“The claimed composition is defined as
comprising - meaning containing at least - five specific ingredients.”); In re
Baxter, 656 F.2d 679, 686 (CCPA 1981) (“As long as one of the monomers
in the reaction is propylene, any other monomer may be present, because the
term ‘comprises’ permits the inclusion of other steps, elements, or
materials.”).
Turning now to the ground of rejection of claim 33 over Fukuda and
Joly, in view of our interpretation of the term “substrate” and particularly “a
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Application 12/076,994
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single-crystalline semiconductor substrate” in claim 33, we cannot agree
with Appellants’ contentions that the Examiner erred in finding that
Fukuda’s method of manufacturing an SOI substrate includes the step of
forming brittle layer 20 in epitaxially grown semiconductor substrate 14c,
which has a thickness of 500 nm, that is, 0.5 µm, and is formed on and is
supported by silicon substrate 22, meets the limitation of “a single-
crystalline semiconductor substrate having an entire thickness of 50 µm or
less” of the method encompassed by claim 33. Fukuda ¶¶ 0251 – 0254,
0257, Figs. 17A – 18A. Ans. 3 – 4, 20; App. Br. 8 – 15; Reply Br. 1 – 10.
Appellants rely on the same contentions with respect to all of the grounds of
rejection advanced on appeal by the Examiner. App. Br. 15. Thus, as
framed in Appellants’ contentions, the issue of whether the Examiner erred
in this respect is dispositive as to all of the grounds of rejection.
Accordingly, we affirm the grounds of rejection of claims 33, 38, 47,
50, 53, 58, 60, 63, and 65 – 82 under 35 U.S.C. § 103(a) advanced on appeal
by the Examiner.
The Primary Examiner’s decision is 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