Newport Fab, LLC dba Jazz Semiconductor, Inc.

Patent Trials and Appeals Board

May 12, 2021

2020003849 (P.T.A.B. May. 12, 2021)

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.
15/190,038 06/22/2016 David J. Howard TSJ-0150196 (0150196) 1870
22888 7590 05/12/2021
BEVER HOFFMAN & HARMS, LLP
c/o Carrie Reddick, Office Manager
18486 Spring Valley Drive
Grass Valley, CA 95945
EXAMINER
NGUYEN, DILINH P
ART UNIT PAPER NUMBER
2894
NOTIFICATION DATE DELIVERY MODE
05/12/2021 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):
creddick@beverlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID J. HOWARD, HADI JEBORY, and
MARCO RACANELLI
Appeal 2020-003849
Application 15/190,038
Technology Center 2800
Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
JEFFREY R. SNAY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–14, which constitute all the claims
pending in this application. See Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Newport Fab, LLC
dba Jazz Semiconductor, Inc. Appeal Br. 4.
Appeal 2020-003849
Application 15/190,038

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CLAIMED SUBJECT MATTER
The claims are directed to a semiconductor wafer backside
metallization with improved backside metal adhesion. Spec. ¶¶ 2–5. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A semiconductor structure comprising:
a semiconductor substrate having a front side and a back
side surface, wherein one or more semiconductor devices are
fabricated at the front side, and wherein all of the roughness at
the back side surface has an average roughness in the range of
about 5 to 100 nanometers; and
a backside metal structure formed on the back side surface
of the semiconductor substrate.
(Appeal Br. 19 (Claims App.)).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Chou US 2008/0001290 A1 Jan. 3, 2008
Barber US 2009/0045704 A1 Feb. 19, 2009
Kato US 2011/0101539 A1 May 5, 2011
Shatalov US 8,981,403 B2 Mar. 17, 2015
Cich US 8,994,033 B2 Mar. 31, 2015

REJECTIONS
Claims 1–3, 7, and 11–14 are rejected under 35 U.S.C. § 103 as being
unpatentable over Shatalov, Cich, and Kato. Final Act. 2.
Claims 4–6 are rejected under 35 U.S.C. § 103 as being unpatentable
over Shatalov, Cich, Kato, and Barber. Final Act. 4.
Claims 8–10 are rejected under 35 U.S.C. § 103 as being unpatentable
over Shatalov, Cich, Kato, and Chou. Final Act. 5.
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Application 15/190,038

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OPINION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions as set forth in the Appeal Brief and the
Reply Brief, we determine that Appellant has not identified reversible error
in the Examiner’s rejection (see generally Final Act.). In re Jung, 637 F.3d
1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice
of requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the rejection for the reasons expressed by the
Examiner in the Final Office Action and the Answer. We add the following
for emphasis.
The Examiner finds that Shatalov teaches a semiconductor substrate
having a front side and a back side surface with a back side surface
roughness, but does not disclose all of the roughness at the back side surface
has an average roughness in the range of 5 to 100 nm (Final Act. 2
(emphasis added)). Shatalov also does not teach a backside metal structure
formed on the back surface of the semiconductor substrate. Id. The
Examiner relies on Cich to teach a device having all of the roughness at the
back surface within the range of 0.3 nm and 200 nm in order to improve
efficiency (Final Act. 3). The Examiner introduces Kato to exemplify a
backside metal structure to provide an external connection of a
semiconductor module. Id.
It is well settled that “the test for obviousness is what the combined
teachings of the references would have suggested to [a PHOSITA].” In re
Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012). Appellant argues that the
inclusion of the large and small roughness of Shatalov would provide an
average roughness significantly larger than the recited 5 to 100 nanometers
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Application 15/190,038

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(Appeal Br. 11). However, one cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986); In re Keller,
642 F.2d 413 (CCPA 1981). It is not Shatalov alone that is relied upon to
teach the surface roughness, but the combination of Shatalov and Cich (Final
Act. 2‒3). The teachings of Shatalov generally allow for “any number of
roughness elements having any combination of configurations” including a
small roughness component having heights between approximately 10 to
100 nanometers. See Shatalov col. 9, ll. 31‒35, 63‒65. One or ordinary skill
would have appreciated that Shatalov teaches large roughness components
as an option (Shatalov col. 9, ll. 20‒35). Indeed, in light of these teachings,
Shatalov alone renders obvious the recited roughness range, because one of
ordinary skill would have readily inferred that use of the large roughness
features was optional, and that any average roughness within the disclosed
ranges was contemplated. Therefore, Appellant’s arguments directed to the
failure of Shatalov to teach a surface roughness as claimed are not
persuasive (Appeal Br. 11) because they do not adequately address either
Shatalov alone or the Shatalov/Cich combination as set forth by the
Examiner.
Appellant’s argument that Cich requires the optically smooth face to
be chemically roughened (Appeal Br. 12; Reply Br. 2‒4), and thus teaches
away from the claimed surface roughness (Appeal Br. 13), is not persuasive.
Whether the prior art teaches away from the claimed invention is a question
of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). It is well
established that a prior art reference must be considered in its entirety, i.e.,
as a whole, when determining if it would lead one of ordinary skill in the art
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Application 15/190,038

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away from the claimed invention. W.L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983).2 One of ordinary skill in the art
would have readily appreciated that the non-chemically treated, polished
surface of Cich having a roughness in the range of 0.3 nm to 200 nm would
have functioned effectively to carry current (see e.g., Cich, col. 1, ll. 63‒65;
col. 6, ll. 16‒19). Thus, there would have been a reasonable expectation that
the surface roughness exemplified in Cich would have been suitable for all
of the back side surface roughness in the semiconductor of Shatalov, where
Shatalov teaches a surface roughness encompassed by the surface roughness
of Cich (see Shatalov col. 9, ll. 63‒66).
Thus, a preponderance of the evidence supports the Examiner’s
finding that Cich teaches or suggests a surface roughness having all the
roughness in the range of 0.3 nm to 200 nm.
Appellant’s assertion that there is no motivation to replace the large
and small roughness components of Shatalov with the optically smooth
surface of Cich (Appeal Br. 13‒14) is not persuasive, as the small roughness
taught by Shatalov (see Shatalov col. 9, ll. 63‒65) falls within the surface
roughness taught by Cich (see Cich col. 1, ll. 63-65). Thus, as stated supra,
there would have been a reasonable expectation that the surface roughness
exemplified in Cich would have been suitable for all of the back side surface
roughness in the semiconductor of Shatalov.

2 Cf. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971) (Disclosed examples
and preferred embodiments do not constitute a teaching away from a broader
disclosure or non-preferred embodiments.); Syntex (U.S.A.) LLC v. Apotex,
Inc., 407 F.3d 1371, 1379–80 (Fed. Cir. 2005) (Even a “statement that a
particular combination is not a preferred embodiment does not teach away
absent clear discouragement of that combination.”).
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Application 15/190,038

6
Appellant’s teaching away argument with respect to the addition of a
backside metal structure to the back side surface of Shatalov (Appeal Br. 15;
Reply Br. 6) is also not persuasive of reversible error. The statement in
Shatalov that the back surface 50A can be configured to improve the
extraction of radiation (Shatalov col. 9, ll. 4‒6; emphasis added) is not an
explicit teaching that a backside metal structure may not to be formed on the
back side surface of the semiconductor substrate of Shatalov.
Indeed, Appellant’s Specification describes that it was known that a
backside metal structure would be formed on backside surfaces of
semiconductor substrates to connect exposed through substrate vias (TSVs)
(Spec. ¶ 5).3 In light of these circumstances, Appellant has not provided
persuasive technical reasoning or adequate evidence that the addition of a
backside metal structure as exemplified in Kato to the semiconductor
substrate surface of Shatalov would not have been within the skill and
creativity of one of ordinary skill in the art. That is, Appellant has not
sufficiently explained why the claimed subject matter is “more than the
predictable use of prior art elements according to their established
functions.” KSR, 550 U.S. at 417.

3 An applicant cannot defeat an obviousness rejection by asserting that the
cited references fail to teach or suggest elements which the applicant has
acknowledged are taught by the prior art. Constant v. Advanced Micro-
Devices, Inc., 848 F. 2d 1560, 1570 (Fed. Cir. 1988) (“A statement in a
patent that something is in the prior art is binding on the applicant and
patentee for determinations of anticipation and obviousness.”); In re
Nomiya, 509 F.2d 566, 571n.5 (CCPA 1975) (a statement by an applicant
that certain matter is prior art is an admission that the matter is prior art for
all purposes).

Appeal 2020-003849
Application 15/190,038

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Appellant does not separately argue any of the dependent
claims (Appeal Br. 17‒18).
Accordingly, Appellant has not shown reversible error in any of the
rejections and we sustain the § 103 rejections of all of the claims on appeal.
CONCLUSION
The Examiner’s rejections are AFFIRMED.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 7, 11–
14
103 Shatalov, Cich,
Kato
1–3, 7, 11‒
14

4–6 103 Shatalov, Cich,
Kato, Barber
4–6
8–10 103 Shatalov, Cich,
Kato, Chou
8–10
Overall
Outcome
1–14

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