Semiconductor Energy Laboratory Co., Ltd.

Patent Trials and Appeals Board

Oct 14, 2021

2021001042 (P.T.A.B. Oct. 14, 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.
15/372,554 12/08/2016 Junichi KOEZUKA 12732-1771001/US23580 1137
26171 7590 10/14/2021
FISH & RICHARDSON P.C. (DC)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
CHIU, TSZ K
ART UNIT PAPER NUMBER
2822
NOTIFICATION DATE DELIVERY MODE
10/14/2021 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUNICHI KOEZUKA, YUKINORI SHIMA,
TOSHIMITSU OBONAI, HIROSHI KANEMURA, and
DAISUKE KUROSAKI
Appeal 2021-001042
Application 15/372,554
Technology Center 2800
Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
HOUSEL, 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 finally rejecting claims 1–6, 13–20, and 23. Pending
claims 21 and 22 have been withdrawn from consideration. Final Office
Action (“Final Act.”) dated December 12, 2019, at 2. However, Appellant

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Semiconductor Energy Laboratory Co.,
Ltd. as the real party in interest. Appeal Brief (“Appeal Br.”) filed May 8,
2020, at 1.
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Application 15/372,554
2
limits this appeal to the Examiner’s rejection of claim 23 only. Appeal Br. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The invention recited in the claim on appeal relates to an oxide
semiconductor film, in particular an indium–gallium–zinc oxide film.
Specification (“Spec.”) filed December 8, 2016, ¶¶ 1, 45, 46.2
Claim 23, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
23 An oxide semiconductor film comprising In, Ga, and Zn,
wherein the oxide semiconductor film includes a region
with a film density higher than or equal to 6.42 g/cm3 and lower
than 6.48 g/cm3, and
wherein a peak indicating crystallinity appears in XRD
measurement of the oxide semiconductor film.
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Yamazaki et al.
“Yamazaki”
US 2013/0153889 A1 June 20, 2013

REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
rejection of claim 23 under 35 U.S.C. § 103 as unpatentable over Yamazaki.

2 This Decision also cites to the Examiner’s Answer (“Ans.”) dated October
10, 2020, and the Reply Brief (“Reply Br.”) filed November 30, 2020.
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Application 15/372,554
3
The Examiner maintains, but Appellant does not request our review
of, the rejection of claims 1–6 and 13–20 under 35 U.S.C. § 103 as
unpatentable over Yamazaki.
OPINION
As indicated above, the Examiner rejects claims 1–6, 13–20, and 23
under 35 U.S.C. § 103 as unpatentable over Yamazaki, but Appellant
requests our review of the rejection of claim 23 only. Appeal Br. 1; see also
id. at 2–4. Accordingly, we summarily affirm the obviousness rejection as to
claims 1–6 and 13–20. Our discussion below is limited to the merits of the
obviousness rejection of claim 23.
We review the appealed rejection for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claim and each of Appellant’s arguments, we are not persuaded of
reversible error in the appealed rejection. Therefore, we affirm the
obviousness rejection of claim 23 for the reasons given in the Examiner’s
Answer and below.
The Examiner finds that Yamazaki teaches an oxide semiconductor
film comprising In, Ga, and Zn, but acknowledges that Yamazaki fails to
teach that the film has a density higher than or equal to 6.42 g/cm3 and lower
than 6.48 g/cm3 or has a peak indicating crystallinity in an XRD (“X-Ray
Diffraction”) measurement. Ans. 4. However, the Examiner finds that
Yamazaki’s film has crystallinity as measured by Rutherford backscattering
or X-ray reflectivity and, therefore, inherently would have a peak in an XRD
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Application 15/372,554
4
measurement. Id. at 5. In addition, the Examiner finds that Yamazaki teaches
a film density range of 6.0–6.375 g/cm3, which does not overlap the claimed
film density range. Id. at 4–5. Nonetheless, the Examiner finds that
Yamazaki’s film density and the claimed film density are “extremely close,”
and determines that they are so close that an ordinary artisan would have
expected the films to have the same properties. Id. at 5, 9 (citing Titanium
Metals Corp. of Am. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985); Warner-
Jenkinson Co., v. Hilton Davis Chem. Co., 520 U.S. 17 (1997); In re Becket,
88 F.2d 684 (CCPA 1937); Gentiluomo v. Brunswick Bowling and Billiards
Corp., 36 Fed. App’x 433 (Fed. Cir. 2002) (non-precedential); In re Brandt,
886 F.3d 1171, 1177 (Fed. Cir. 2018)).
Also, the Examiner finds that Yamazaki teaches that low film density
allows oxygen, hydrogen, and water to diffuse into film voids which can
lead to film deterioration and progressive failure. Ans. 10. The Examiner
additionally finds that Yamazaki not only teaches that an InGaZn oxide
semiconductor film having an atomic ratio of In:Ga:Zn=1:1:1 has a
theoretical maximum density of 6.375 g/cm3, but also teaches that the
theoretical density changes when the atomic ratio changes, such as atomic
ratios of In:Ga:Zn of 3:2:1, 2:2:1, 1:1:2, and 2:1:4. Id. at 10–11. The
Examiner thus finds that Yamazaki not only teaches a desire for higher film
densities, but also teaches how to attain higher film densities by varying the
atomic ratio of In:Ga:Zn. Id. at 11.3

3 We note that the Examiner discusses a scope of enablement issue because
claim 23 fails to explicitly exclude an In:Ga:Zn atomic ratio of 1:1:1. Ans.
11, fn. 10. Because the Examiner has not rejected claim 23 under 35 U.S.C.
§ 112(a) for lack of enablement for its entire scope, we need not further
discuss this issue. However, we note that given the known theoretical film
density for an InGaZn oxide semiconductor film having an atomic ratio of
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Application 15/372,554
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Appellant argues that Yamazaki fails to describe or suggest an
InGaZn oxide semiconductor film including a region with a film density of
6.42 g/cm3 to less than 6.48 g/cm3 and having an XRD peak indicating
crystallinity. Appeal Br. 2. Appellant contends that neither of these features
is a product-by-product limitation. Id. at 3. Appellant also contends that
[a]bsent a description or suggestion by Yamazaki to vary the
film density of the oxide semiconductor film 403 to provide a
region with a film density “higher than 6.42 g/cm3 and lower
than 6.48 g/cm3,” as recited in claim 23, one of ordinary skill in
the art would have had no reason to modify the oxide
semiconductor film 403 described by Yamazaki to arrive at the
recited film density.
Id. at 4.
Appellant asserts that Yamazaki teaches the theoretical density of 6.375
g/cm3 for an InGaZn oxide semiconductor film having an atomic ratio of
In:Ga:Zn=1:1:1, but fails to describe or suggest exceeding this theoretical
value. Id. Appellant further asserts that Yamazaki fails to describe or suggest
a target material composition, as well as deposition conditions, by which an
oxide semiconductor film having a film density of 6.42–6.48 g/cm3 may be
formed. Reply Br. 1. In addition, Appellant asserts that Yamazaki fails to
describe or suggest what particular changes in target composition will result
in an increase in film density. Id. As such, Appellant contends that an
ordinary artisan would not have understood from Yamazaki “how to achieve
an oxide semiconductor film formed using the different atomic ratios of
In:Ga:Zn in order to form an oxide semiconductor having a film density that

1:1:1 is less than the lower limit of the claimed range, it is apparent that
claim 23 does not encompass such a film.
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is ‘higher than or equal to 6.42 g/cm3 and lower than 6.48 g/cm3.’” Id. at 1–
2.
Appellant’s arguments are not persuasive of reversible error. Initially,
we note that claim 23’s limitation regarding crystallinity is merely an
indication that the film has crystallinity. Appellant has not shown that
Yamazaki’s film does not have crystallinity (contrary to the Examiner’s
finding) or would not inherently have a peak indicating crystallinity as
measured using XRD, rather than other techniques for detecting crystallinity
as Yamazaki discloses. Thus, a preponderance of the evidence supports the
Examiner’s finding that Yamazaki teaches a film having the crystallinity that
claim 23 recites.
Turning next to the film density range recited in claim 23, we agree
with Appellant that, absent a teaching in the prior art to vary the film density
of an oxide semiconductor film, an ordinary artisan would have had no
reason to modify Yamazaki’s film density to arrive at the recited film
density. In this regard, the legal principle behind Titanium Metals—a prima
facie case of obviousness may be found when a claimed range and a prior art
range do not overlap, but are close enough that one skilled in the art would
have expected them to have the same properties—is not an absolute. Our
reviewing court has cautioned against applying per se rules. In re Ochiai, 71
F.3d 1565, 1572 (Fed. Cir. 1995) (“The use of per se rules, while
undoubtedly less laborious than a searching comparison of the claimed
invention—including all its limitations—with the teachings of the prior art,
flouts section 103 and the fundamental case law applying it.”). Indeed,
Titanium Metals itself requires a reasonable expectation that the claimed
product and the prior art product would have the same properties. Titanium
Metals, 778 F.2d at 783. And even if a prima facie case of obviousness is
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established, Titanium Metals also recognizes that this merely shifts the
burden to Appellant to show the claimed product and the prior art product
are different. Id.
Applying these principles to the present case, it is undisputed that
Yamazaki teaches an InGaZn oxide semiconductor film having an atomic
ratio of In:Ga:Zn=1:1:1 having a theoretical or maximum film density of
6.375 g/cm3, a value that is less than the claimed lower limit of 6.42 g/cm3.
As such, it is not possible that this particular film falls within the scope of
the claim because it is not possible to increase this film’s density beyond its
theoretical limit. Therefore, there can be no reasonable expectation that the
claimed product and Yamazaki’s In:Ga:Zn=1:1:1 film would have the same
properties. See In re Patel, 566 F. App’x 1005 (Fed. Cir. 2014); cf. Brandt,
886 F.3d at 1177.
The story does not end here, however. As the Examiner further finds,
Yamasaki not only teaches the film density range for an InGaZn oxide
semiconductor film having an atomic ratio of In:Ga:Zn=1:1:1, Yamazaki
also teaches the inventive film is not limited to this atomic ratio. Ans. 11;
Yamazaki ¶ 70. Yamazaki also teaches that films having different atomic
ratios may be produced using sputtering targets having different ratios, and
that changing the atomic ratio of the film changes the film’s theoretical
density. Id. In addition, Yamazaki teaches that higher density sputtering
targets produce higher film densities and that higher densities are preferred.
Id. ¶ 20. Thus, contrary to Appellant’s contentions, a preponderance of the
evidence supports the Examiner’s findings that Yamazaki provides a reason
why an ordinary artisan would desire higher film densities, as well as
teaching how to achieve different film densities by varying the film’s atomic
ratio. Appellant fails to establish that an ordinary artisan following
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Application 15/372,554
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Yamazaki’s teachings would not have a reasonable expectation of success in
forming an InGaZn oxide semiconductor film having a film density within
the claimed range. Nor has Appellant argued that the claimed film density
yields unexpected results. Absent such, Appellant has not identified a
reversible error in the Examiner’s obviousness rejection of claim 23 over
Yamazaki.
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 23.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Examiner’s Answer, the Examiner’s decision to reject claims 1–6,
13–20, and 23 under 35 U.S.C. § 103 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 13–
20, 23
103 Yamazaki 1–6, 13–
20, 23

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED