Ex Parte YU et al

Patent Trial and Appeal Board

May 18, 2017

13371169 (P.T.A.B. May. 18, 2017)

United States Patent and Trademark Office
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.
13/371,169 02/10/2012 Chen-Hua YU TSM07-0117C2 7763
05/22/201743859 7590
SLATER MATSIL, LLP
17950 PRESTON ROAD, SUITE 1000
DALLAS, TX 75252
EXAMINER
NGUYEN, CUONG QUANG
ART UNIT PAPER NUMBER
2811
NOTIFICATION DATE DELIVERY MODE
05/22/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing @ slatermatsil. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte CHEN-HUA YU, CHENG-HUNG CHANG, CHEN-NAN YEH,
and YU-RUNG HSU
Appeal 2016-007213
Application 13/371,169
Technology Center 2800
Before KAREN M. HASTINGS, WESLEY B. DERRICK, and
JEFFREY R. SNAY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1, 2, 4-9, 11-16, and 20 under 35 U.S.C. 103 as
unpatentable over at least the combined prior art of Okuno (US
2006/0157749 Al, pub. Jul. 20, 2006) and Anderson (US 2009/0078999 Al,
1 Appellants identify the real party in interest as “Taiwan Semiconductor
Manufacturing Company, LTD” (App. Br. 2).
Appeal 2016-007213
Application 13/371,169
Mar. 26, 2009).2 We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We AFFIRM.
Claims 1, 8, and 14 are independent and illustrative of the subject
matter on appeal (emphasis added):
1. A semiconductor device comprising:
a fin on a substrate, the fin having a first height from the
substrate and comprising a top surface and a first sidewall; and
a contact in physical connection with both the top surface of
the fin and the first sidewall of the fin, the contact extending from
the top surface a first distance along the fin towards the substrate,
the first distance being less than the first height.
8. A semiconductor device comprising:
a conductive semiconductor region on a substrate, the
conductive semiconductor region comprising a first surface facing
away from the substrate and a second surface extending between the
first surface and the substrate;
a dielectric layer overlying the conductive semiconductor
region and covering the second surface; and
a contact extending into the dielectric layer and in contact with
the first surface and the second surface, wherein a first portion of the
dielectric layer is located between a bottom surface of the contact
and the substrate.
14. A semiconductor device comprising:
a fin in contact with a substrate, the fin comprising a
semiconductor material; and
2 The Examiner applies additional prior art to dependent claims 6, 12, and 13
(Final Action 5, 6). Appellants do not separately argue the patentability of
any of these claims (App. Br. 6-10).
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Appeal 2016-007213
Application 13/371,169
a conductive contact making physical contact with multiple
sides of the fin, at least one of the multiple sides of the fin being
perpendicular to the substrate, the conductive contact not in physical
contact with the substrate.
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s conclusion that the subject matter of
Appellants’ claims is unpatentable over the applied prior art. We sustain the
rejections essentially for the reasons set out by the Examiner in the Answer.
We add the following primarily for emphasis.
Appellants’ principal arguments are that the Examiner’s modification
of Okuno to extend the side area(s) of its contact 26 only part way down the
side of the fin (as exemplified to be a known arrangement in Anderson) is in
direct contradiction to its teachings and further that Okuno teaches away
from this proposed modification (App. Br. 8,9). Appellants further contend
that the Examiner is using an inappropriate standard for obviousness (Reply
Br. 2-5).
Whether a reference teaches away from a claimed invention is a
question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). As
pointed out by the Examiner, the argument is unavailing because Okuno
does not teach that its electrode must contact the entire sidewall surface of
the fin (Ans. 3). Furthermore, the claims do not require any specific height
less than the height of the fin, and thus encompass contact with a fin
sidewall up to, for example, 99% of its height. Appellants’ arguments that
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Appeal 2016-007213
Application 13/371,169
Okuno de facto requires contact with 100% of its fin sidewall is
unpersuasive in light of Anderson’s teaching to the contrary. Cf, Winner
Inti Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The
fact that the motivating benefit comes at the expense of another benefit,
however, should not nullity its use as a basis to modify the disclosure of one
reference with the teachings of another. Instead, the benefits, both lost and
gained, should be weighed against one another.”). Cf. Para-Ordnance
Manufacturing, Inc. v. SGSImporters International, Inc., 73 F.3d 1085,
1090 (Fed. Cir. 1995) (to teach away, a reference must state that a feature
“should not” or “cannot” be used in combination with other features in the
prior art.)
Consequently, after consideration of Appellants’ arguments, we are
unpersuaded of error in the Examiner’s determination of obviousness.
Appellants’ arguments do not adequately address the Examiner’s reasoning
for combining the prior art. Appellants have not adequately explained why
one skilled in the art would not have combined Okuno’s and Anderson’s
teachings so as to arrive at a modified semiconductor device having the
recited contact relationship with the fin along a sidewall as stated by the
Examiner. KSR Int’l Co., 550 U.S. at 416 (2007) (The combination of
familiar elements or steps according to known methods is likely to be
obvious when it does no more than yield predictable results); Ball Aerosol
and Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993
(Fed. Cir. 2009) (Under the flexible inquiry set forth by the Supreme Court,
the PTO must take account of the “inferences and creative steps,” as well as
routine steps, that an ordinary artisan would employ).
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Appeal 2016-007213
Application 13/371,169
Accordingly, we affirm the Examiner’s prior art rejections of all the
under 35 U.S.C. § 103(a) for the reasons given above and presented by the
Examiner.
DECISION
The Examiner’s prior art rejections are affirmed.
TIME PERIOD FOR RESPONSE
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).
AFFIRMED
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