Ex Parte Beasom

Board of Patent Appeals and Interferences

Apr 28, 2009

11436448 (B.P.A.I. Apr. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JAMES D. BEASOM
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Appeal 2009-1481
Application 11/436,448
Technology Center 2800
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Decided1: April 28, 2009
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Before KENNETH W. HAIRSTON, MARC S. HOFF, and KARL D.
EASTHOM, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1 to 17. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-1481
Application 11/436,448

The Invention
Appellant’s invention is an integrated circuit having a sealed nitride
layer.2 Appellant discloses and claims an integrated circuit having a
plurality of semiconductor device regions (e.g., emitter, collector contact,
and base regions) formed on a substrate.3 A layer of oxide lies over the
substrate, and two different nitride layers lie over the oxide layer and the
device regions.4
Claims 1 and 14 are representative of the claims on appeal, and read
as follows:

1. An integrated circuit comprising:

a substrate;

a plurality semiconductor devices formed in the substrate, some of the
semiconductor devices having device regions formed adjacent a surface of
the substrate;

a layer of oxide overlaying the surface of the substrate;

a first layer of nitride overlaying the layer of oxide, the first layer of
nitride and the layer of oxide having a plurality of contact openings
extending to select device regions in the substrate; and

portions of a second layer of nitride overlaying sidewalls of each
contact opening, wherein the portions of the second layer of nitride
overlaying the oxide layer in the sidewalls are thinner than the first layer of
nitride overlaying the rest of the layer of oxide.

2 See Abs.; Spec. [0021], [0022]; Fig. 2.
3 See id.; claims 1, 5, and 14.
4 See id.
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14. An integrated circuit having a NPN transistor, the integrated circuit
comprising:

a substrate having a surface;

a base formed in the substrate adjacent the surface of the substrate;

an emitter formed in the base region adjacent the surface of the
substrate;
a collector contact formed in the substrate adjacent the surface of the
substrate;

an oxide layer overlaying the surface of the substrate, the oxide layer
being patterned to have a first opening to the base, a second opening to the
emitter and third opening to the collector contact;
a first layer of nitride overlaying the oxide layer; and
a second different layer of nitride overlaying sidewalls to the first,
second and third openings, wherein the first and second layers of nitride seal
the oxide layer.
The Rejection
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Appellant’s Admitted Prior Art (hereinafter, “APA”), Figure 1
of the Drawings and Specification [0020]

The Examiner rejected claims 1 to 17 under 35 U.S.C. § 102(b) as
being anticipated by the teachings of APA.
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Application 11/436,448

Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer for their respective details.5 In this
decision, we have considered only those arguments actually made by
Appellant. Appellant presents no separate argument for the patentability of
claims 2 to 4, 6 to 12, and 15 to 17 with regard to the rejection under
§ 102(b) (see App. Br. 4-9; Reply Br. 1). Arguments not made by Appellant
in the Briefs are considered waived. See Hyatt v. Dudas, 551 F.3d 1307,
1313-14 (Fed. Cir. 2008).

ISSUES
The Examiner rejected all of the claims, including each of the
independent claims (claims 1, 5, and 14), under § 102(b) as being anticipated
by the teachings of APA (see Ans. 3-4). The Examiner’s rejection is
premised on an interpretation of each of claims 1, 5, and 14 as requiring only
one nitride layer since both layers are made of the same nitride material (see
Ans. 4-6). The Examiner points to nitride layer 92 in Figure 1 of APA as
meeting the first and second nitride layer limitations recited in independent
claims 1, 5, and 14, and thus, in each of dependent claims 2 to 4, 6 to 13, and
15 to 17.
First Issue: Claims 1 to 4
With regard to claims 1 to 4, Appellant presents specific arguments
only as to independent claim 1 (App. Br. 5-6; Reply Br. 1). Appellant

5 We refer to (1) the Appeal Brief filed December 27, 2007 (App. Br.), (2)
the Examiner’s Answer mailed March 18, 2008 (Ans.), and (3) the Reply
Brief filed May 16, 2008 (Reply Br.), throughout this opinion.

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contends that APA fails to teach a first and second layer of nitride, “wherein
the portions of the second layer of nitride overlaying the oxide layer in the
sidewalls are thinner than the first layer of nitride overlaying the rest of the
layer of oxide” (see claim 1 supra) (hereinafter, “the thickness limitation”),
as set forth in claim 1 (App. Br. 5-6; Reply Br. 1).
The thickness limitation, “wherein the portions of the second layer of
nitride overlaying the oxide layer in the sidewalls are thinner than the first
layer of nitride overlaying the rest of the layer of oxide,” occurs in
independent claim 1 as well as each of claims 2 to 4 which depend directly
or indirectly therefrom.
The first issue is: Has Appellant shown that the Examiner erred in
determining that APA teaches first and second nitride layers “wherein the
portions of the second layer of nitride overlaying the oxide layer in the
sidewalls are thinner than the first layer of nitride overlaying the rest of the
layer of oxide,” as set forth in each of claims 1 to 4 on appeal?
Second Issue: Claims 5 to 17
Independent claim 5, as well as each of claims 6 to 13 which depend
directly or indirectly therefrom, recites a “first layer of nitride” and a
“second different nitride layer” (see claim 5 supra). Independent claim 14,
as well as each of claims 15 to 17 which depend directly or indirectly
therefrom, recites a “first layer of nitride” and a “second different layer of
nitride” (see claim 14). Because claims 5 and 14 share the common feature
of having two different nitride layers, and because the Examiner rejected
theses claims based on a common reason (i.e., that APA teaches a nitride
layer that possesses the characteristics of the nitride layers recited in claims
5 and 14), we consider claim 14 to be representative of the group of claims
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consisting of claims 5 to 17, pursuant to our authority under 37 C.F.R. §
41.37(c)(1)(vii). See In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002)
(stating that Board’s rules require “the group from which a representative
claim is selected be defined by a common ground of rejection”)); Hyatt v.
Dudas, 551 F.3d at 1312 (defining a common ground of rejection as not only
the statutory requirement for patentability, but also the reason why the
claims fail that requirement, i.e., the differences between the claims are “of
no patentable consequence to the contested rejection”) (citing McDaniel,
293 F.3d at 1383).
With regard to claims 5 to 17, Appellant contends that APA fails to
teach two different nitride layers, and instead only teaches a single layer of
nitride (App. Br. 7 and 9; Reply Br. 1). Appellant also contends that two
layers of nitride are needed in the process used to make the invention as
claimed in claims 5 and 14 (Reply Br. 1).
Accordingly, the second issue is: Has Appellant met his/her burden of
coming forward with evidence demonstrating that APA does not necessarily
or inherently possess the characteristics of the product recited in
representative claim 14 on appeal, those of a integrated circuit having a first
nitride layer and a second different layer of nitride?

FINDINGS OF FACT
The findings of fact (FF) throughout this Decision are supported by a
preponderance of the evidence of record.

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Appellant’s Disclosure
1. Appellant describes and claims an integrated circuit (see Figs. 2 and
3f) having a substrate 104, device regions 112/114/116 formed in or adjacent
the substrate 104, an oxide layer 102 overlaying the surface 129 of the
substrate 104, a first layer of nitride 106 overlaying the oxide layer 102, and
a second layer of nitride 160 overlaying sidewalls of openings 107/109/111
in the fist layer of nitride 106 and the oxide layer 102 (see Abs.; Spec.
[0021], [0022]; see generally claims 1, 5, and 14). The first nitride layer 106
and the second nitride layer 160 are both formed using the same low
pressure chemical vapor deposition (LPCVD) process (Spec. [0024] and
[0026]).
2. Appellant recognizes it is known in the art that “[f]or improved
performance, it is desired that the layer of nitride cover all of the oxide, even
around the perimeter and sidewalls of contact openings through the oxide to
the surface of the substrate,” and that “it is desired in the art to form an
integrated circuit with reduced process steps” (Spec. [0007]). Appellant also
recognizes that “there is a need in the art for an integrated circuit with
reduced process steps in forming an oxide sealed with nitride in contact
openings” (Spec. [0008]).
3. The instant application is a divisional application of U.S. Patent
Application No. 10/033,156, now U.S. Patent No. 7,071,111 (Spec. [0001]).
The issued claims in U.S. Patent No. 7,071,111 are all method claims that
claim the process for making an integrated circuit having a sealed nitride
layer. The claims of the instant application on appeal, claims 1 to 17, claim
the product made by the process (i.e., product-by-process claims), and not
the method of making.
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APA
4. APA describes a bipolar NPN transistor 80 of the prior art which is
illustrated in prior art Figure 1 (Spec.[0020]). The entire description of prior
art Figure 1 occurs at paragraph 0020, bridging pages 5 to 6 of the
Specification:
[0020] Before the present invention is described in
detail, a bipolar NPN transistor 80 of the prior art is illustrated
in Figure 1, to provide further background. As illustrated, this
prior art device has in a substrate 82 of an integrated circuit.
Formed in the substrate 82 is a base 84, an emitter 86 and a
collector contact 88. A layer of oxide 90 is formed on the
surface 89 of the substrate 82. The layer of oxide 90 is
patterned to form contact openings to the base 84, emitter 86
and the collector contact 88 as illustrated in Figure 1. A layer
of nitride 92 is then deposited overlaying the oxide 90 and any
exposed surface 89 of the substrate to seal the layer of oxide 90.
In the prior art, a mask step or steps is then performed to pattern
the layer of nitride to once again form contact openings to the
base 84, emitter 86 and the collector contact 88. Accordingly,
the contact openings through the layer of nitride 92 are nested
inside the previously formed oxide contacts. These extra
patterning steps to form the contact openings through the layer
of nitride 92 add cost to the manufacture of integrated circuits
as well as introduce alignment tolerance issues. One feature of
the present invention reduces patterning steps required in
making contact openings through layers of nitride and oxide.

5. APA teaches an integrated circuit having an NPN transistor 80
comprising a substrate 82 having a surface 89, a base 84 formed in the
substrate 82 adjacent the surface 89 of the substrate, an emitter 86 formed in
the base region 84 adjacent the surface 89 of the substrate 82, a collector
contact 88 formed in the substrate 82 adjacent the surface 89 of the substrate
82, and an oxide layer 90 overlaying the surface 89 of the substrate 82, the
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Application 11/436,448

oxide layer 90 being patterned to have a first opening to the base 84, a
second opening to the emitter 86 and third opening to the collector contact
88 (see Fig. 1). APA also teaches a first layer of nitride 92 overlaying the
oxide layer 90, and a second layer of nitride 92 overlaying sidewalls to the
first, second and third openings, wherein the first and second layers of
nitride seal the oxide layer (Fig. 1; FF 4 supra).
6. APA does not teach a first and second layer of nitride, wherein
portions of the second layer of nitride overlaying an oxide layer in sidewalls
of an opening of the first nitride layer and the oxide layer are thinner than
the first layer of nitride overlaying the rest of the layer of oxide. APA fails
to provide any description or discussion of differences in the thicknesses of
the first and second nitride layers.

PRINCIPLES OF LAW
Anticipation is established when a single prior art reference discloses
expressly or under the principles of inherency each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir.
1994).
Although product-by-process claims are limited by and defined by the
process by which the product is made, “determination of patentability is
based on the product itself.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir.
1985) (internal citations omitted). “If the product in a product-by-process
claim is the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different
process.” Id., (citing In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983)).
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Application 11/436,448

“Where a product-by-process claim is rejected over a prior art product that
appears to be identical, although produced by a different process, the burden
is upon applicants to come forward with evidence establishing an unobvious
difference between the claimed product and the prior art product. Id.
(internal citations omitted).

ANALYSIS
First Issue: Claims 1 to 4
The anticipation rejection of claims 1 to 4 is reversed because we
agree with the Appellant’s argument that APA does not teach two nitride
layers with different thicknesses as recited in each of claims 1 to 4 (App. Br.
5-6). APA fails to teach a first and second layer of nitride, wherein portions
of the second layer of nitride overlaying an oxide layer in sidewalls of an
opening of the first nitride layer and the oxide layer are thinner than the first
layer of nitride overlaying the rest of the layer of oxide (FF 6).
Appellant (App. Br. 6) describes the APA layer as having different
thicknesses, but states that the sidewall portions are thicker than the
remaining portions – the opposite of what the claim requires. This
description comports with Figure 1. On the other hand, the Examiner’s
depiction of the relative layer thicknesses (Ans. 7) defines the second nitride
layer thickness as ending at an arbitrary point within the layer. Such a
construction, absent any articulated reason for it, vitiates the meaning of the
word “thinner” in claim 1.
In view of the foregoing, Appellant has shown that the Examiner erred
in determining that APA teaches a first and second layer of nitride, wherein
portions of the second layer of nitride overlaying an oxide layer in sidewalls
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of an opening of the first nitride layer and the oxide layer are thinner than
the first layer of nitride overlaying the rest of the layer of oxide.
Anticipation is established only when a single prior art reference (i.e., APA)
discloses each and every limitation of the claimed invention (i.e., the
thickness feature of claims 1 to 4). Atlas Powder Co. v. IRECO, Inc., 30
F.3d at 1347; Paulsen, 30 F.3d at 1478-79. Because APA does not teach the
thickness limitation (i.e., the feature that portions of the second layer of
nitride are thinner than the first layer of nitride), APA lacks at least one
limitation of claims 1 to 4 and thus cannot anticipate the claims. We
therefore reverse the Examiner’s rejection of claims 1 to 4 as being
anticipated by APA.
Second Issue: Claims 5 to 17
Product-by-process claims are limited by and defined by the process
by which the product is made, and determination of patentability is based on
the product itself. Thorpe, 777 F.2d at 697 (internal citations omitted). If
the product claimed is the same as a product of the prior art, “the claim is
unpatentable even though the prior product was made by a different
process.” Thorpe, 777 F.2d at 697 (citing Marosi, 710 F.2d at 803). In the
instant case, the product is the integrated circuit of product-by-process
claims 5 to 17, which are made using Appellant’s process, described in the
Specification and claimed in U.S. Patent No. 7,071,111 (see FF 3).
Appellant describes the improvement over the prior art as being a new
process for making the product (i.e., integrated circuit), one which uses
fewer steps (FF 2), and one which eliminates a masking step and the need to
align tolerances of the contact openings (see Spec. [0028]). However,
Appellant has not adequately demonstrated that the nitride layers of the
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product recited in claims 5 to 17 are any different than what is shown in
Figure 1 of APA.
“Where a product-by-process claim is rejected over a prior art product
that appears to be identical, although produced by a different process, the
burden is upon applicants to come forward with evidence establishing an
unobvious difference between the claimed product and the prior art product.
Marosi, 710 F.2d at 803 (internal citations omitted).
In this case, the Examiner has established a prima facie case of
anticipation by demonstrating that the integrated circuit as set forth in claims
5 to 17 is the same as the integrated circuit shown and described by APA
(see FF 4 and 5; Ans. 3-6). Once a prima facie case has been adduced, the
burden then shifts to Appellant “to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product.”
Thorpe, 777 F.2d at 698 (emphasis added) (internal quotations and citations
omitted).
As indicated supra, Appellant argues that APA does not teach two
different nitride layers (see App. Br. 7-9; Reply Br. 1). In an effort to
demonstrate that the two nitride layers are different, and do not necessarily
or inherently possess the same characteristics of the integrated circuit and
nitride layers of Figure 1 of APA, Appellant contends that the two nitride
layers are distinguishable “even though they are both nominally nitride”
(App. Br. 7). Appellant’s arguments hinge on the assertion that the two
nitride layers have different properties such as (i) compositions which vary
with deposition conditions, (ii) refractive indices, (iii) state of stress, and (iv)
amount of included chemical species such as H (see App. Br. 7 and 9).
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Appellant’s arguments concerning the alleged differences in the
nitride layers are unpersuasive because they are not commensurate in scope
with what is claimed. Furthermore, Appellant recognizes that the two layers
recited in claims 5 and 14 “are both nominally nitride” (see App. Br. 7 and
9). As noted by the Examiner, Appellant’s Specification describes that both
layers of nitride are made using the same low pressure chemical vapor
deposition (LPCVD) process (Ans. 6; FF 1). Thus, Appellant has not met
his burden of demonstrating that the claimed integrated circuit is necessarily
or inherently different than that of APA. To the contrary, the evidence
before us indicates that the two layers are the same (FF 1).
Appellant has not successfully rebutted the Examiner’s prima facie
case of anticipation by demonstrating that the two nitride layers recited in
claims 5 and 14 are different. As discussed supra, we consider claim 14 as
representative of the group of claims consisting of claims 5 to 17. Because
all of the limitations of representative claim 14 are found in the teachings of
APA, we sustain the Examiner’s rejection of claim 14 (see FF 4 and 5).
Atlas Powder Co. v. IRECO Inc., 190 F.3d at 1347; In re Paulsen, 30 F.3d at
1478-79. Because the Examiner rejected claim 5 for common reasons and
under the common ground of anticipation over the teachings of APA, we
also sustain the rejection of claim 5.
Appellant has presented no arguments with respect to the rejection of
claims 6 to 12 and 15 to 17, and as such, Appellant has not shown the
Examiner erred in rejecting these claims. See 37 C.F.R. §§ 41.37(c)(1)(vi)
and (c)(1)(vii). We therefore sustain the Examiner’s rejection of claims 6 to
12 and 15 to 17 for the same reasons discussed supra with respect to
representative claim 14.
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With regard to claim 13, Appellant’s argument that APA fails to teach
that an emitter and a collector contact are formed through the first nitride
layer is unpersuasive (App. Br. 8). Figure 1 of APA clearly shows an
emitter 86 and a collector contact 88 that are formed through openings in
both the oxide layer 90 and the first nitride layer 92 (see FF 5). We
therefore sustain the Examiner’s rejection of claim 13 for the foregoing
reason, and for the reasons discussed supra with respect to claim 5 from
which claim 13 ultimately depends.

CONCLUSIONS OF LAW
First Issue: Claims 1 to 4
Appellant has shown that the Examiner erred in determining that APA
teaches a first and second nitride layer “wherein the portions of the second
layer of nitride overlaying the oxide layer in the sidewalls are thinner than
the first layer of nitride overlaying the rest of the layer of oxide,” as set forth
in each of claims 1 to 4 on appeal.
Second Issue: Claims 5 to 17
Appellant has not met his burden of coming forward with evidence
demonstrating that APA does not necessarily or inherently possess the
characteristics of the product recited in representative claim 14 of an
integrated circuit having a first nitride layer and a second different layer of
nitride.

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Application 11/436,448

ORDER
The decision of the Examiner rejecting claims 1 to 4 is reversed. The
decision of the Examiner rejecting claims 5 to 17 is affirmed. Accordingly,
the decision of the Examiner rejecting claims 1 to 17 is affirmed-in-part.
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)(iv).

AFFIRMED-IN-PART

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