Ex Parte Yu

Board of Patent Appeals and Interferences

Apr 20, 2004

09845604 (B.P.A.I. Apr. 20, 2004)

1 The cancellation of claims 17-20 should be effectuated
upon return of this application to the Examining Corps.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BIN YU
____________
Appeal No. 2004-0657
Application No. 09/845,604
____________
ON BRIEF
____________
Before GARRIS, WALTZ, and DELMENDO, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 1-16. During prosecution, claims 17-20 were withdrawn from
further consideration by the Examiner and canceled by the Appellant
via the amendment filed December 23, 2002 (see the last sentence on
page 1) although this cancellation has not been clerically
processed.1 These are all of the claims in the application.

Appeal No. 2004-0657
Application No. 09/845,604
2
The subject matter on appeal relates to a method of
fabricating a double-gate vertical channel MOSFET, having separate
gates, on a substrate. The method comprises forming a silicon-
insulator stack wherein a silicon fin is capped with insulation,
insulating the vertical surfaces of the silicon fin and forming
separate gate electrodes on opposing sides of the silicon fin.
This appealed subject matter is adequately illustrated by
independent claim 1 which reads as follows:
1. A method of fabricating a double-gate vertical channel
MOSFET, having separate gates, on a substrate, comprising:
forming a silicon-insulator stack wherein a silicon fin is
capped with insulation;
insulating the vertical surfaces of the silicon fin; and
forming separate gate electrodes on opposing sides of the
silicon fin, wherein conventional process steps may be thereafter
utilized to form the contacts and complete fabrication of the
double-gate vertical MOSFET transistor.

The reference set forth below is relied upon by the Examiner
in the § 102 and § 103 rejections before us:
Muller et. al (Muller) 6,252,284 June 26, 2001
(Filed Dec. 9, 1999)
Claims 1-3, 5, 7-11, 13, 14 and 16 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Muller.
Claims 4, 6, 12 and 15 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Muller.
Appeal No. 2004-0657
Application No. 09/845,604
3
As indicated by the Appellant on page 3 of the brief, the
appealed claims are grouped separately from one another.
Therefore, in assessing the merits of the rejections before us,
we will consider each claim individually to the extent that the
subject matter recited therein has been separately argued. See
37 CFR § 1.192(c)(7)(8)(2002). Also see Ex parte Schier, 21 USPQ2d
1016, 1018 (Bd. Pat. App. & Int. 1991).
We refer to the brief and reply brief and to the answer for
a complete discussion of the opposing viewpoints expressed by the
Appellant and by the Examiner concerning the above noted
rejections.
OPINION
For the reasons which follow, we will sustain the Examiner’s
§ 102 rejection of claims 1-3 and 5 as well as the § 103 rejection
of claims 4 and 6. However, the § 102 rejection of claims 7-11,
13, 14 and 16 as well as the § 103 rejection of claims 12 and 15
cannot be sustained.
Our assessment of the rejections before us begins with the
well established legal proposition that, during examination
proceedings, claims are given their broadest reasonable
interpretation consistent with the specification. In re Hyatt,
Appeal No. 2004-0657
Application No. 09/845,604
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211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000).
Concerning the § 102 rejection specifically, it is important to
bear in mind that the law of anticipation requires a distinction be
made between the invention described and the invention claimed and
accordingly that anticipation law does not require a reference to
teach what the subject specification teaches. It is only necessary
that the claims under review “read on” something disclosed in the
reference whereby all limitations of the claim are found in the
reference or are “fully met” by it. Kalman v. Kimberly-Clark
Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983),
cert. denied, 465 U.S. 1026 (1984).
Our application of these principles to the claims on appeal
leads us to find that claim 1 is anticipated by Muller. As
correctly indicated by the Examiner, patentee discloses a method of
making a double gated MOSFET which includes forming a silicon-
insulator stack wherein patentee’s SOI fin 4 is capped with
insulation 15 or 20 (e.g., see lines 36-53 in column 5 as well as
Figures 2-7 and the disclosures relating thereto). This prior art
method also includes insulating the vertical surfaces of the
silicon film with an oxide layer 12 (see Figure 7A and the
disclosure relating thereto) and forming separate gate electrodes
Appeal No. 2004-0657
Application No. 09/845,604
2 In addition to being without value, these so-called
“arguments” (particularly in the quantity advanced by the
Appellant on this appeal) carry the potential of diluting
and possibly obfuscating arguments of merit. For these reasons,
we discourage the advancement of such “arguments” in appeal
(continued...)
5
on opposing sides of the silicon fin (e.g., see lines 36-44 in
column 5 in conjunction with the paragraph bridging columns 7 and
8).
Many of the Appellant’s arguments against this claim 1
rejection (as well as the other rejections before us) involve
features disclosed in the subject specification or in the Muller
patent which are neither required nor excluded by the claims under
review. For example, regarding claim 1 (as well as other appealed
claims), the Appellant repeatedly argues that Muller “contains key
elements not found within Applicant’s invention which would render
Muller non-functional to remove” (see page 7 of the brief; also see
each of pages 8-14 of the brief) even though these “key elements”
are not excluded by the claim in question. Such arguments fail at
the outset because they are based on matters with respect to which
the appealed claims are not limited. See In re Self, 671 F.2d
1344, 1348, 213 USPQ 1, 5 (CCPA 1982). These arguments are
undeserving of our attention and will not be commented upon
further.2
Appeal No. 2004-0657
Application No. 09/845,604
2(...continued)
briefs before this Board.
6
The Appellant also argues that “there is only a single, non-
enabling reference to double gates anywhere in Muller” (brief,
page 7) and that, “[a]bsent an enabling disclosure of how to create
dual gates on opposite sides of the fin, Muller cannot anticipate
Applicant’s invention” (brief, pages 7-8). This argument is
without discernable merit. The Muller patent is presumptively
valid (35 U.S.C. § 282), and, as the Appellant acknowledges,
patentee explicitly discloses a double gated device. See In re
Weber, 450 F.2d 1403, 1407, 160 USPQ 549, 553 (CCPA 1969) and
In re Michalek, 162 F.2d 229, 231-32, 74 USPQ 107, 109 (CCPA 1947).
With further regard to this last mentioned acknowledgment,
the Appellant seems to believe and argue that the double-gate
structure fabricated by his method differs from patentee’s double
gated device. We agree with the Examiner, however, that appealed
claim 1 defines no such difference. It is here appropriate to
reiterate that the law of anticipation does not require a reference
to “teach” what the Appellant teaches; it is only necessary
that the claim in question “read on” something disclosed in the
reference. Kalman v. Kimberly-Clark Corp., 713 F.2d at 772, 218
USPQ at 789. As explained above and in the answer, each of the
Appeal No. 2004-0657
Application No. 09/845,604
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steps and features required by the appealed claim 1 method “read
on” the previously discussed steps and features of Muller.
In light of the foregoing, we share the Examiner’s finding
that appealed claim 1 is anticipated by the Muller patent.
Regarding the § 102 rejection of claim 2, the Appellant (at
least implicitly) concedes that the Muller device “is often called
‘double gated’” but argues that patentee’s double gated device “is
distinctly different from Applicant’s electrically isolated dual
gates” as defined by appealed claim 2 (reply brief, page 5, first
full paragraph). According to the Appellant, the basis for this
alleged distinction is that “[t]he polysilicon layer 21 [of Muller]
clearly extends over the silicon fin 4, creating a semiconductor
device with only one electrically isolated source and drain!”
(id.). However, the Appellant’s device is correspondingly
disclosed in the subject specification and drawing (e.g., see
Figure 6).
It follows that the method and features defined by appealed
claim 2 also “read on” the method and features of Muller.
We reach this same finding with respect to appealed claims 3
and 5. The Appellant’s opposing arguments regarding the features
recited in these clams are contrary to the explicit disclosure of
the Muller patent and thus are unpersuasive.
Appeal No. 2004-0657
Application No. 09/845,604
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Under the circumstances discussed above, we hereby sustain the
Examiner’s § 102 rejection of claims 1-3 and 5 as being anticipated
by Muller.
As for the § 103 rejection of claims 4 and 6, the Muller
reference evinces that the here claimed parameters of fin height
and gate material thickness are known in the prior art as being
result-effective variables. Therefore, like the Examiner, we
conclude that is would have been obvious for one having an ordinary
level of skill in this art to develop workable or even optimum
values for these parameters in practicing Muller’s fabrication
method. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934,
1936-37 (Fed. Cir, 1990); In re Boesch, 617 F.2d 272, 276, 205 USPQ
215, 219 (CCPA 1980); In re Aller, 220 F.2d 454, 456, 105 USPQ 233,
235 (CCPA 1955).
In support of his nonobviousness position, the Appellant
argues that Muller’s device “is a factor of ten larger than the
Applicant’s disclosed invention” (reply brief, page 17). This is
incorrect. Patentee’s device is disclosed as being in the size
range of micrometers to nanometers (e.g., see the abstract), which
at least overlaps the size range contemplated by the Appellant
as reflected by the 150 nanometer and 600 nanometer dimensions
encompassed by rejected claims 4 and 6. The Appellant’s other
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arguments concerning this rejection are in conflict with the well
established case law cited above and therefore are unconvincing.
As a consequence, we also hereby sustain the Examiner’s § 103
rejection of claims 4 and 6 as being unpatentable over Muller.
We cannot sustain, however, the Examiner’s § 102 rejection of
claims 7 and 10 or of the claims which depend therefrom. Each of
claims 7 and 10 requires removing an upper portion of gate material
until the insulation cap of the stack or fin is exposed. The
Examiner considers this claim requirement to be satisfied by
Muller’s disclosure at lines 35-42 in column 7 (e.g., see pages
15 and 19 of the answer). However, this disclosure relates to
removing polysilicon layer 25 to thereby expose nitride layer 22
as shown in Figures 11A and 11B. This nitride layer 22 does not
“read on” the insulation cap of the stack or fin which is exposed
during practice of the method defined by claims 7 and 10. Indeed,
layer 22 is without question physically separated from patentee’s
fin (or stack) 4 as plainly revealed in the aforementioned Figures
11A and 11B.
For this reason, we cannot sustain the Examiner’s § 102
rejection of claims 7–11, 13, 14 and 16 as being anticipated by
Muller. Similarly, we also cannot sustain the Examiner’s § 103
rejection of claims 12 and 15 as being unpatentable over Muller
Appeal No. 2004-0657
Application No. 09/845,604
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since this rejection does not overcome the above discussed
deficiency regarding claim 10 from which the here rejected claims
depend.
The decision of the Examiner is affirmed-in-part.
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
BRG/jrg
Appeal No. 2004-0657
Application No. 09/845,604
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