II-VI OptoElectronic Devices, Inc.

Patent Trials and Appeals Board

May 1, 2020

2019003415 (P.T.A.B. May. 1, 2020)

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.
15/438,322 02/21/2017 Kevin Chi-Wen Chang IP2014.4CIP 9020
146730 7590 05/01/2020
Wendy W. Koba
II-VI Incorporated
PO Box 556
Springtown, PA 18081
EXAMINER
LIU, BENJAMIN T
ART UNIT PAPER NUMBER
2893
NOTIFICATION DATE DELIVERY MODE
05/01/2020 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):
wendykoba@usa.net
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KEVIN CHI-WEN CHANG, DAVID HENSLEY,
and WILLIAM WILKINSON
____________

Appeal 2019-003415
Application 15/438,322
Technology Center 2800
____________

Before JEFFREY T. SMITH, BRIAN D. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–19. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

STATEMENT OF THE CASE
Appellant’s invention is generally directed to a bi-layer compensation
structure for mitigating the effects of epitaxial layer-induced warpage of a

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as II-VI Optoelectronic
Devices, Inc. Appeal Br. 1.
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semiconductor wafer and a fabrication method of forming such a bi-layer
structure. Appeal Br. 2.
Claims 1 and 18 illustrate the subject matter on appeal and are
reproduced below:
1. A method of compensating for bow in a semiconductor wafer
comprising:
obtaining a semiconductor wafer including an epitaxial
layer formed on a top major surface of a semiconductor substrate,
the epitaxial layer causing a wafer bow across the surface of the
semiconductor substrate;
applying an adhesion layer across an exposed major
surface of the semiconductor wafer; and
depositing a stress compensation layer over the adhesion
layer, the stress compensation layer exhibiting a high stress state
and formed to a thickness sufficient to substantially reduce the
amount of wafer bow.

18. A bow-compensated semiconductor wafer comprising:
a substrate of a semiconductor material, the substrate having
first and second major surfaces;
an epitaxial layer formed on the first major surface of the
substrate, the combination of the substrate and the epitaxial layer
creating a wafer bow across the semiconductor wafer;
an adhesion layer formed on an exposed major surface of the
semiconductor wafer; and
a stress compensation layer formed on the adhesion layer, the
stress compensation layer exhibiting a high stress state and formed to
a thickness sufficient to reduce the created wafer bow.

Appeal Br. 12 and 14, Claims Appendix.

The following rejections are presented for our review:
I. Claims 1, 3–5, 12–13, and 18 rejected under 35 U.S.C. § 102(a)(2)
as anticipated by Wang (US 2015/0255955 A1; published Sept. 10, 2015).
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II. Claim 2 rejected under 35 U.S.C. § 103 as unpatentable over Wang
in view of Horning (US 6,770,504 B2; issued Aug. 3, 2004).
III. Claims 6–11 and 14 rejected under 35 U.S.C. § 103 as
unpatentable over Wang in view of Kim (US 2015/0340225 A1; published
Nov. 26, 2015).
IV. Claims 15–17 and 19 rejected under 35 U.S.C. § 103 as
unpatentable over Wang.

OPINION
After review of the respective positions provided by Appellant and the
Examiner, we REVERSE the Examiner's prior art rejections under 35 U.S.C.
§ 102(a)(2) and 35 U.S.C. § 103.
Rejection under 35 U.S.C. § 102(a)(2) 2, 3
The Examiner finds Wang teaches a method of applying a multi-layer
epitaxial structure across an exposed major surface of a semiconductor
wafer. (Final Act. 2; Wang ¶¶ 55 and 57, Figure 3.) The Examiner
determines the first layer of Wang’s multi-layer epitaxial structure satisfies
the limitation of an adhesion layer and that the remaining layers of Wang’s
multi-layer epitaxial structure satisfy the limitation of a stress compensation
layer. (Final Act. 2.)
The dispositive issue on appeal is:
Did the Examiner err in determining that the first layer of Wang’s
multi-layer epitaxial structure satisfies the limitation requiring an adhesion

2 We limit our discussion to independent claims 1 and 18.
3 The complete statement of this rejection on appeal appears in the Final
Office Action. (Final Act. 2–4.)
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layer as recited in independent claims 1 and 18?
We answer this question in the affirmative.
Appellant argues that Wang does not disclose or suggest any type of
adhesion layer as defined by independent claims 1 and 18. (Appeal Br. 5.)
Appellant further states that without a teaching of every element of
independent claims 1 and 18, Wang cannot be found to anticipate the
claimed subject matter. (Id.)
We agree. We give claims their broadest reasonable scope consistent
with the Specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). The words used in a claim must be read in light of
the Specification, as it would have been interpreted by one of ordinary skill
in the art at the time of the invention. Id. Paragraph 32 of the Specification
is reproduced below:

High stress compensation layer 350 may be formed of the
same material as adhesion layer 340 or, alternatively, a different
material may be used. If the same material is used, different
deposition conditions are utilized to control the specific
qualities of each layer (i.e., forming layer 340 to adhere to
wafer 100; forming layer 350 to exhibit high stress that
compensates for wafer bow).

In the Answer, the Examiner explains that the first layer of the multi-
layer epitaxial structure of 334 adheres to the bottom surface of 323 and
functions as an adhesion layer that joins the rest of the multi-layered
epitaxial structure to 323 (Ans. 3). However, the Examiner does not point to
any portion of Wang that supports this assertion. The Examiner has not
identified where Wang discloses the conditions utilized to control the
specific qualities of the first layer 334 to provide adherent properties. While
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the Examiner reasons that the first layer of Wang’s multi-layer epitaxial
structure inherently adheres the substrate to the rest of the multi-layered
epitaxial structure (Ans. 4; Wang ¶ 57), an inherent characteristic must be
inevitable, and not merely a possibility or probability. In re Oelrich, 666
F.2d 578, 581 (CCPA 1981). The Examiner has not established that Wang
discloses a layer possessing the inherent characteristics of a layer which can
be considered an adhesion layer in light of the description in Appellant’s
Specification. (Spec. ¶¶ 17, 32.) Moreover, the Examiner does not direct us
to any portion of Wang that describes the structure of Wang’s multi-layer
epitaxial structure. Thus, the Examiner has not directed us to any portion of
Wang or any other objective evidence supporting the assertion that Wang’s
first layer of the multi-layer epitaxial structure acts as an adhesion layer.
Accordingly, we do not sustain the rejection of claims 1, 3–5, 12–13,
and 18 (Rejection I) for the reasons the Appellant presents (Appeal Br. 5–8.)
and those we give above.
Rejections under 35 U.S.C. § 103
We likewise reverse the Examiner’s decision to reject dependent
claims 2, 6, 14–17 and 19 (Rejections II, III, and IV) under 35 U.S.C. § 103
since these rejections are premised on the Examiner’s unsupported
allegations regarding Wang. We need not reach whether the Examiner’s
reliance on the additional references cited for these rejections was supported
by the evidence of record because the Examiner’s findings regarding Wang
cannot stand.

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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 3–5,
12–13,
18
102(a)(2) Wang 1, 3–5,
12–13, 18
2 103 Wang, Horning 2
6–11, 14 103 Wang, Kim 6–11, 14
15–17,
19
103 Wang 15–17 19
Overall
Outcome
1–19

REVERSED