Ex Parte Cheng et alDownload PDFPatent Trial and Appeal BoardFeb 15, 201311259295 (P.T.A.B. Feb. 15, 2013) Copy Citation 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. 11/259,295 10/26/2005 Kangguo Cheng ROC920050218US1 4189 7590 02/15/2013 James R. Nock IBM Corporation Intellectual Property Law Dept. 917 3605 Hwy. 52 North Rochester, MN 55901 EXAMINER KIM, SUN M ART UNIT PAPER NUMBER 2813 MAIL DATE DELIVERY MODE 02/15/2013 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 KANGGUO CHENG, HERBERT L. HO and JACK A. MANDELMAN ____________________ Appeal 2010-008741 Application 11/259,295 Technology Center 2800 ____________________ Before ALLEN R. MacDONALD, HUNG H. BUI and LYNNE E. PETTIGREW, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008741 Application 11/259,295 2 STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 15-20. We have jurisdiction under 35 U.S.C. § 6(b). Exemplary Claims Exemplary claim 15 under appeal reads as follows (emphasis added): 15. A method, comprising; (a) providing a substrate including a microelectronic device; and (b) forming a void in the substrate around a portion of the microelectronic device so that the void reduces a parasitic leakage between the microelectronic device and the bulk substrate. Rejections 1. The Examiner rejected claims 15-17, 19, and 20 under 35 U.S.C. § 102(b) as being anticipated by Mandelman (US 6,437,401 B1). 1 2. The Examiner rejected dependent claim 18 as being unpatentable under 35 U.S.C. § 103(a) over Mandelman. 2 3. The Examiner rejected dependent claims 15-17, 19, and 20 as being unpatentable under 35 U.S.C. § 103(a) over Schindler (US 7,033,926). 3 1 Separate patentability is not argued for claims 16, 17, 19, and 20. Except for our ultimate decision, these claims are not discussed further herein. 2 The patentability of dependent claim 18 under 103(a) is not separately argued from that of the independent claims rejected under 102(b). Except for our ultimate decision, this claim is not discussed further herein. 3 Appellants’ Appeal Brief is silent as to this rejection and does not request its review as required by 37 C.F.R. § 41.37(c)(1)(vi). Therefore appeal of this rejection was waived and we affirm this rejection as a matter of form. Appeal 2010-008741 Application 11/259,295 3 4. The Examiner rejected dependent claim 18 as being unpatentable under 35 U.S.C. § 103(a) over the combination of Schindler and Lur (US 2004/0097013 A1). 4 Appellants’ Contentions 1. Appellants contend that the Examiner erred in finding that Mandelman anticipates claim 15 because “the Examiner’s burden of establishing that conductive material 19 is a microelectronic device has not been met.” (App. Br. 5). 2. At pages 3-5 of the Appeal Brief, Appellants also contend that Mandelman does not support anticipation of claim 15 because: Mandelman fails to disclose, for example, forming a void in a substrate around a portion of a microelectronic device so that the void reduces a parasitic leakage between the microelectronic device and the bulk substrate. (App. Br. 3) (emphasis added). Issues on Appeal 1. Whether the Examiner has erred in rejecting claim 15 as being anticipated because Mandelman’s item 19 is not a microelectronic device? 2. Whether the Examiner has erred in rejecting claim 15 as being anticipated because the Examiner is required to prove that Mandelman possesses the claimed functional limitation (“reduces parasitic leakage”) asserted by Appellants to be critical for establishing novelty in the claimed subject matter, (i.e., because the Examiner does not possess the authority to 4 Appellants’ Appeal Brief is silent as to this rejection and does not request its review as required by 37 C.F.R. § 41.37(c)(1)(vi). Therefore appeal of this rejection was waived, and we affirm this rejection as a matter of form. Appeal 2010-008741 Application 11/259,295 4 require Appellants to prove that the prior art product does not possess the characteristics relied on)? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions (App. Br. and Reply Br.) that the Examiner has erred in rejecting the claims based on Mandelman. We disagree with Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. We concur with the conclusion reached by the Examiner. As to Appellants’ above contention 1, we disagree for the reasons set forth by the Examiner in the discussion of the storage capacitor node 19. (See particularly Ans. 6-7). As to Appellants’ above contention 2, we disagree. We conclude that the Examiner has set forth a reasonable basis to believe that Mandelman’s structure possesses the claimed functional limitation (“reduces parasitic leakage”). (See particularly Ans. 7-8). Contrary to Appellants’ arguments, the Examiner has presented a prima facie case for both anticipation and obviousness. Also contrary to Appellants’ arguments, it is well established that the burden of going forward has shifted to Appellants. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appeal 2010-008741 Application 11/259,295 5 “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990). However, the prima facie case can be rebutted by evidence showing that the prior art product does not necessarily possess the characteristics of the claimed product. Best, 562 F.2d at 1255; see also Titanium Metals Corp. v. Banner, 778 F.2d 775 (Fed. Cir. 1985). Appellants have presented no evidence that Mandelman’s structure, which is identical to the claimed structure, fails to possess the claimed properties. CONCLUSIONS (1) The Examiner has not erred in rejecting claims 15-17, 19, and 20 as being anticipated under 35 U.S.C. § 102(b) over Mandelman. (2) The Examiner has not erred in rejecting claim 18 as being unpatentable under 35 U.S.C. § 103(a) over Mandelman. (3) The Examiner has not erred in rejecting claims 15-17, 19, and 20 as being unpatentable under 35 U.S.C. § 103(a) over Schindler. (4) The Examiner has not erred in rejecting claim 18 as being unpatentable under 35 U.S.C. § 103(a) over the combination of Schindler and Lur. (5) Claims 15-20 are not patentable. DECISION The Examiner’s rejections of claims 15-20 are affirmed. Appeal 2010-008741 Application 11/259,295 6 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 ELD Copy with citationCopy as parenthetical citation