Ex Parte YUM et al

Patent Trial and Appeal Board

Dec 23, 2016

13271522 (P.T.A.B. Dec. 23, 2016)

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.
3487.003 7758
EXAMINER
TALBOT, BRIAN K
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
13/271,522 10/12/2011 Jung Hwan YUM
23405 7590 12/27/2016
HESLIN ROTHENBERG FARLEY & MESITI PC
5 COLUMBIA CIRCLE
ALBANY, NY 12203
12/27/2016 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 JUNG HWAN YUM, GENNADI BERSUKER, and
K. SANJAY BANERJEE
Appeal 2014-008343
Application 13/271,522
Technology Center 1700
Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner’s decision finally rejecting, under 35 U.S.C. § 103(a), claims 1—8
and 10—12 as unpatentable over the combination of Maes,3 Parsons,4 and
1 Our decision refers to the Specification (Spec.) filed October 12, 2011,
Appellants’ Appeal Brief (Appeal Br.) filed March 20, 2014, and the
Examiner’s Answer (Ans.) mailed May 29, 2014.
2 According to Appellants, the real party in interest is Sematech, Inc.
Appeal Br. 1.
3 US 6,818,517 Bl, issued November 16, 2004.
4 WO 84/03995, published October 11, 1984 (“Parsons”).
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Application 13/271,522
Jones,5 and claim 9 as unpatentable over this combination adding Ritala.6
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to a process for preparing a beryllium oxide
(BeO) layer on a semiconductor substrate. Spec. 11. Appellants disclose
that BeO has some desirable properties including excellent thermal stability
and conductivity, large energy band-gap, and a dielectric constant very close
to atomic layer deposited (ALD) aluminum oxide. Id. at | 5. In addition,
Appellants note that beryllium’s lack of d orbitals may reduce the formation
of defects in the crystalline oxide. Id. Beryllium oxide also has a very short
bond length with strong covalent bonding allowing formation of a dense
structure with small interstitial spaces. Id. As such, Appellants disclose that
BeO can provide an excellent interface passivation layer (IPL), if it can be
applied in a discrete, well-ordered film. Id.
Claim 1, reproduced below from the Claims Appendix to Appellants’
Brief, is illustrative of the subject matter on appeal:
1. A process for forming a beryllium oxide film on a substrate
comprising the sequential steps of:
(a) providing a substrate in a reaction chamber;
(b) exposing said substrate to a dialkylberyllium or
dihaloberyllium compound;
(c) exposing said substrate to a source of oxygen,
steps (b) and ( c) comprising a single cycle,
whereby said dialkylberyllium compound and said source
of oxygen react to form a beryllium oxide film on said substrate.
5 US 2011/0184156 Al, published July 28, 2011.
6 US 6,632,279 Bl, issued October 14, 2003 (“Ritala”).
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Application 13/271,522
ANALYSIS
Claims 1—8 and 10—12
Appellants state that claims 1—8 and 10—12 stand or fall together. Br.
4. Accordingly, we select claim 1 to address the issues raised by Appellants’
arguments. 37 C.F.R. § 41.37(c)(iv) (2013). The dispositive issue before us
on appeal is whether the Examiner’s rejections rely improperly on hindsight
reconstruction by arbitrarily picking and choosing from three references
guided by Appellants’ disclosure. We answer this question in the negative.
Therefore, we sustain the above rejection based on the findings of fact,
conclusions of law, and rebuttals to arguments expressed by the Examiner in
the Final Office Action and the Answer. The following comments are added
for emphasis.
The Examiner finds Maes teaches a method of depositing plural layers
in situ whereby one layer is formed by ALD and another layer is formed by
chemical vapor deposition. Ans. 2. The Examiner finds Maes further
teaches the ALD layer is a metal oxide which may be BeO, formed by
sequential or alternating of precursor gases of metal and oxygen with
intermediate purging of the precursors. Id. Also, the Examiner finds Maes’
process can be repeated to form multilayer films. Id. However, the
Examiner acknowledges Maes fails to teach that the beryllium metal
precursor gas is a dialkyberyllium compound such as diethylberyllium. Id.
Nonetheless, the Examiner finds Parsons teaches a metal organic
chemical vapor deposition (MOCVD) beryllium precursor may be
diethylberyllium. Id. In addition, the Examiner finds Jones teaches
precursors for forming metal oxide films by MOCVD and ALD, wherein the
precursors may include alkyl groups. Id. The Examiner concludes that it
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Application 13/271,522
would have been obvious to use diethylberyllium as the metal precursor gas
in Maes’ process for forming a BeO film “with the expectation of achieving
similar success since it is shown that alkyl precursors for MOCVD and ALD
are interchangeable for forming metal oxide films.” Id.
Appellants contend that the Examiner’s obviousness conclusion is
based on hindsight reconstruction involving picking and choosing the
elements of claim 1 from the three applied prior art references. Br. 4. In
particular, Appellants argue that the rejection requires selecting a single non­
preferred metal from Maes’ disclosure of 24 metals to use in only the first
half of a two-step process. Id. at 5. As to the selection of a non-preferred
metal in Maes as the starting point for obviousness, Appellants cite to
Takeda Chemical Industries, Ltd. V. Alphapharm Pty., Ltd., 492 F.3d 1350
(Fed. Cir. 2007) and Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280
(Fed. Cir. 2012), without further comment or elaboration. Id. at 7.
Appellants further argue that the Examiner then arbitrarily selects bits
of the disclosures of Parsons and Jones. Id. at 5. Parsons, Appellants assert,
uses a mixture of trimethylgallium, arsine, and diethylberyllium to produce
Be-doped GaAs, and does not disclose the deposition of a BeO film or an
oxidative process. Id. at 6. Jones, Appellants assert, discloses metal
alkoxide precursors for making oxides of rare earth metals, and fails to
disclose beryllium. Therefore, according to Appellants, other than
Appellants’ disclosure, there is no motivation to consider Parsons or Jones.
Id. Moreover, Appellants argue that an ordinary artisan, looking for a
process to make BeO, would never have found either Parsons or Jones. Id.
Appellants’ arguments not only raise the issue of improper hindsight
reconstruction, but also allude to Parsons and Jones being non-analogous
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prior art. As Appellants recognize (Br. 5), “[a]ny judgment on obviousness
is in a sense necessarily a reconstruction based upon hindsight reasoning, but
so long as it takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made and does not
include knowledge gleaned only from applicant’s disclosure, such a
reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395, 170
USPQ 209, 212 (CCPA 1971). Thus, in order to determine whether the
Examiner’s hindsight reconstruction is proper, we look to determine whether
it takes account only knowledge within the ordinary skill in the art, as
evidenced by the applied prior art.
Yet, as we noted above, Appellants’ arguments imply that Parsons and
Jones are non-analogous prior art, in that one would not have found and
considered either reference in forming a BeO film. Our reviewing court has
stated that “[t]wo separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004) (citations and internal quotes omitted). While these
two criteria are helpful in many instances, we must not lose sight of the key
question at hand: what is “prior art” as that term is used in 35 U.S.C.
§ 103(a)? References that are “too remote to be treated as ‘prior art’” are
excluded from the obviousness analysis. In re Sovish, 769 F.2d 738, 741,
226 (Fed. Cir. 1985). The non-analogous art test provides helpful insight on
the underlying question of what is “prior art” within the meaning of the
statute; we should not, however, be blind to the reality of the circumstances
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Application 13/271,522
of the case before us. In re Wood, 599 F.2d 1032, 1036 (CCPA (1979). Nor
should we adhere to rigid and mandatory formulas that overly limit the
inquiry. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
Here, the Examiner’s findings are not in dispute. See Br. 4
(“Appellants do not here argue whether the [EJxaminer has found the
elements of claim 1 in the three cited references.”). Maes teaches the metal
oxide is preferably selected from a group including BeO, although Maes
further discloses a subgroup of “particularly preferred oxides” which does
not include BeO. Maes 2:26—31; also 3:51—58. Nonetheless, Maes does not
teach BeO is a non-preferred embodiment; BeO is a preferred embodiment,
but is not a particularly preferred embodiment. Further Maes teaches the
oxide film may be formed by ALD using a metal precursor or source
compound.7 Maes 4:10-40. As to Parsons, although Parsons does not form
a BeO film, but instead uses a beryllium precursor as a source of Be dopant,
Parsons is nonetheless reasonably pertinent to the particular problem with
which Appellant is involved and for which the ordinary artisan seeking to
implement Maes’ ALD process in forming a BeO film would be concerned,
i.e., selecting a precursor compound for delivering beryllium to the reactor.
Furthermore, although Jones does not form a BeO film, but instead forms
films of rare earth metal oxides, Jones is also reasonably pertinent to this
same problem. Jones teaches an ALD process for forming a metal oxide
7 Maes teaches a metal halide, HfCE, as an example metal precursor or
source compound. Maes 4:62. Since Be has two valence electrons (as
opposed to Hf’s four valence electrons), beryllium chloride, would be BeCE,
or dihaloberyllium. Thus, the ordinary artisan would have found use of
beryllium chloride to have been an obvious precursor compound when
forming BeO films within the teaching of Maes.
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film and includes alkyl containing metal precursor compounds for delivering
the metal to the reactor. We, therefore, find that the ordinary artisan faced
with the problem of selecting a beryllium precursor compound for use in
Maes’ ALD process would have looked to both Parsons and Jones for
guidance in that selection.
As to Appellants’ hindsight reconstruction argument, we note the
Examiner articulates reasoning with rational underpinning in support of the
obviousness conclusion. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”), quoted with approval in KSR, 550 U.S. at 418. Appellants
neither dispute the Examiner’s findings nor the Examiner’s articulated
reasoning for combining the teachings of the applied prior art references. In
addition, Appellants fail to identity in what way the Examiner has failed to
fully appreciate what each of these references fairly suggest to one of
ordinary skill in the art. In re Wesslau, 353 F.2d 238 (CCPA 1965). As
indicated above, Appellants’ argument merely implies unpersuasively that
Parsons and Jones are non-analogous prior art, e.g., “one would not look to a
reduction process for guidance in devising process parameters for an
oxidation.” Br. 5. Accordingly, we do not find Appellants’ improper
hindsight reconstruction argument persuasive of reversible error in the
Examiner’s rejection of claim 1.
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Claim 9
Claim 9 depends from claim 1 via claim 8, and further requires that
the substrate is either InGaAs or GaAs. The Examiner adds Ritala to the
prior combination of Maes, Parsons, and Jones to reject claim 9. Appellants
traverse this rejection only by arguing that Ritala fails to cure the
deficiencies previously argued with regard to the combination of Maes,
Parsons, and Jones. However, as discussed above, Appellants’ arguments
with regard to the Maes, Parsons, and Jones combination fails to persuade us
of reversible error. As such, this combination has no such deficiencies nor
does the Examiner rely on Ritala to cure such deficiencies. Accordingly, we
will also sustain the Examiner’s obviousness rejection of claim 9.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Answer, the decision of the Examiner rejecting claims 1—12 under 35
U.S.C. § 103(a) as unpatentable over the combination of Maes, Parsons, and
Jones, alone or further combined with Ritala, 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).
AFFIRMED
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