Ex Parte Dutta

Patent Trial and Appeal Board

Dec 18, 2018

13770005 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/770,005 02/19/2013
115309 7590 12/20/2018
W &T/Qualcomm
106 Pinedale Springs Way
Cary, NC 27511
FIRST NAMED INVENTOR
Ranadeep Dutta
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
120478/1173-157 9516
EXAMINER
VU,PAULINE
ART UNIT PAPER NUMBER
2823
NOTIFICATION DATE DELIVERY MODE
12/20/2018 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):
patents@wt-ip.com
us-docketing@qualcomm.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANADEEP DUTTA
Appeal2018-000467
Application 13/770,005
Technology Center 2800
Before GEORGE C. BEST, JENNIFER R. GUPTA, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-20 of Application 13/770,005
under 35 U.S.C. § 103(a) as obvious. Final Act. (July 6, 2016). Appellant1
seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we reverse.
1 QUALCOMM Inc. is identified as the applicant and real party in interest.
Appeal Br. 1.
Appeal2018-000467
Application 13/770,005
BACKGROUND
The '005 Application describes an electronic semiconductor device.
Spec. ,r 1. In particular, the Specification describes a device that has a
capacitance between two terminals that can be varied by application of a
control voltage to a third terminal. Id. Methods for controlling the
semiconductor device are also described. Id.
Claims 1 and 18 are representative of the '005 Application's claims
and are reproduced below from the Claims Appendix:
1. A tunable capacitor comprising:
a substrate;
a trench gate supported by said substrate, said trench gate
having a first depth and extending in a first direction;
a first well of a first polarity, said first well extending in
said first direction parallel to said trench gate providing a
capacitance positioned between the trench gate and a first well
pickup;
the first well pickup of said first polarity adjacent to said
first well and extending in said first direction; and
a first plurality of depletion control pillars of a second
polarity different from said first polarity and interspersed in
said first well of said first polarity between said trench gate and
said first well pickup, the first plurality of depletion control
pillars each configured to create a respective sized depletion
zone in said first well based on a variable voltage applied to a
respective one of the first plurality of depletion control pillars
to control a change in the capacitance between the trench gate
and the first well pickup.
Appeal Br. 17 ( emphasis added).
18. A method of controlling a device, the method
compnsmg:
determining a device mode of operation;
2
Appeal2018-000467
Application 13/770,005
applying a variable control voltage corresponding to said
determined device mode of operation to a plurality of depletion
control pillars of a tunable capacitor to control a depletion zone
size in a well based on the variable control voltage to control a
change in a capacitance between a trench gate terminal of said
tunable capacitor and a well pickup terminal of said tunable
capacitor, said tunable capacitor including:
a substrate;
a trench gate supported by said substrate, said trench gate
having a first depth and extending in a first direction;
a well of a first polarity, said well extending in said first
direction parallel to said trench gate;
a well pickup, said well pickup being of said first polarity
and being adjacent to said well and extending in said first
direction;
said plurality of depletion control pillars being of a
second polarity being interspersed in said well between said
trench gate and said well pickup, said second polarity being
different from said first polarity; and
said trench gate terminal being in contact with said trench
gate.
Id. at 20 (emphasis added).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-11 and 18-20 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Altmann2 and Collins. 3
Final Act. 3; Answer 2.
2 US 2004/0211985 Al, published October 28, 2004.
3 US 8,008,748 B2, issued August 30, 2011.
3
Appeal2018-000467
Application 13/770,005
2. Claims 12 and 13 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Altmann, Collins, and Jang. 4
Final Act. 12; Answer 11.
3. Claims 14--17 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Altmann, Collins, Krutsick, 5
and Jeon. 6 Final Act. 14; Answer 13.
DISCUSSION
Rejection 1. Independent claims 1 and 18 are subject to this ground
of rejection. Final Act. 3. Claims 2-11 depend from claim 1, and claims 19
and 20 depend from claim 18. Appeal Br. 17-21. Appellant presents
arguments for reversal of the rejection of claims 1, 8, and 18. We select
independent claim 1 as representative of claims 1-7 and 9-11. 3 7 C.F .R.
§ 4I.37(c)(l)(iv). We select independent claim 18 as representative of
claims 18-20. Id. We shall discuss dependent claim 8 separately. Id.
Claim 1. In rejecting claim 1, the Examiner found that Figure 1 of
Altmann discloses a tunable capacitor comprising each element of the
recited apparatus. We reproduce this figure below.
4 US 2013/0049846 Al, published February 28, 2013.
5 US 2010/0006979 Al, published January 14, 2010.
6 US 5,455,192, issued October 3, 1995.
4
Appeal2018-000467
Application 13/770,005
CONTROL
VOLTAGE
N-WELL
SUBSTRATE .11Q
FIGURE 1
Altmann's Figure 1 is a perspective view of a fragment
of a CMOS varactor 100 according to Altmann's
invention. Altmann ,r 13.
104
In particular, the Examiner finds that Figure 1 describes a tunable
capacitor comprising a substrate 110, first well 108, first well pickup 106,
and depletion control pillars 102 and 104 (together comprising a plurality)
which are interspersed in the first well between the trench gate and the first
well pickup. Answer 2--4. The Examiner further finds that Altmann's gate
116 does not amount to an express disclosure of a trench gate having a first
depth and extending in a first direction. Id. at 2. The Examiner, therefore,
proposes modifying Altmann's varactor 100 to substitute the trench gate
described in Collins's tunable capacitor for Altmann's gate 116. Id. at 3
(citing Collins Fig. 12; 6:34--54; 10:37-51). The Examiner found that a
person of ordinary skill in the art would have been motivated to modify
Altmann' s device in this manner to provide "a semiconductor device that
provides high areal capacitance density and minimal leakage current as well
as variability in capacitance." Id.
5
Appeal2018-000467
Application 13/770,005
Appellant argues that the Examiner erred by finding that Altmann
describes or suggests a first plurality of depletion control pillars between the
trench gate and the first well pickup. Appeal Br. 10-12.
The Examiner first responds that "[ t ]he claimed limitation( s) do not
require that each and every single one of the first plurality of depletion
control pillars must be physically located between said trench gate and said
first well pickup." Answer 19 (emphasis added). This argument is
unconvincing. The Examiner is correct that claim 1 does not require each
and every depletion control pillar in the apparatus to be physically located
between the trench gate and the first well pickup. Claim 1, however, does
require that there be a "a first plurality of depletion control pillars ...
interspersed in said first well ... between said trench gate and said first well
pickup." Claim 1, therefore, plainly requires more than one depletion
control pillar in the recited location. Altmann, as the Examiner recognizes,
only shows one depletion control pillar in that location. We cannot sustain
the rejection of claim 1 on this basis.
In the alternative, the Examiner finds that
[i]t would have been obvious to one having ordinary skill in the
art at the time the invention was made to include a first plurality
of depletion control pillars of a second polarity different from
said first polarity and interspersed in said first well of said first
polarity between said trench gate and said first well pickup,
since it has been held that rearranging parts of an invention
involves only routine skill in the art. In re Japikse, 86 USPQ
70 and In re Kuhle, 188 USPQ 7.
Advisory Action 3 (October 26, 2016).
Appellant argues that this rationale is not sufficient to establish a
prima facie case of obviousness of the subject matter of claim 1 over the
combination of Altmann and Collins. Appeal Br. 11-12. In particular,
6
Appeal2018-000467
Application 13/770,005
Appellant argues that the Examiner has not provided any evidence or
reasoning in support of the finding that it would have been obvious to a
person of ordinary skill in the art to modify the combination of Altmann and
Collins so that both of the depletion control pillars 102 and 104 are located
between first well pickup 106 and trench gate 116 (as modified in view of
Collins). Id. at 11. Indeed, Appellant argues that the Examiner's proposed
rearrangement is incompatible with Altmann' s principle of operation. 7 Id.;
see also id. at 14.
We agree with Appellant that the Examiner has not adequately
explained why a person having ordinary skill in the art at the time of the
invention would have modified Altmann to place both depletion control
pillars 102 and 104 between first well pickup 106 and the trench gate
suggested by Collins. As Appellant points out, Altmann explains that the
location of gate 116 is important because it serves as a diffusion mask
between depletion control pillars 102 and 104, allowing the depletion control
pillars to be positioned as close as possible to each other, thereby reducing
parasitic resistance and increasing coupling between diffusion control pillars
102 and 104. Altmann ,r,r 25-30.
7 Appellant also argues that the Examiner did not raise this argument until
the October 26, 2016 Advisory Action, which was filed after the Final
Office Action. Appellant, therefore, "respectfully request [that] this
rejection be withdrawn for this additional reason, or be remanded for
Appellant to rebut the Patents [sic] Office's new position in the Advisory
Action." Appeal Br. 12. Appellant is reminded that questions regarding
whether an Advisory Action or an Examiner's Answer set forth a new
ground of rejection are not reviewable by the PT AB. Rather, such questions
are reviewed by way of a petition to the Director under 3 7 C.F .R. § 1.181.
See In re Berger, 279 F.3d 975, 984--85 (Fed. Cir. 2002).
7
Appeal2018-000467
Application 13/770,005
As this explanation of Altmann's principle of operation makes clear,
the Examiner's proposed relocation of both diffusion control pillar 102 and
diffusion control pillar 104 to the region between first well pickup 106 and
the trench gate suggested by Collins is not a "mere rearrangement" of parts.
Thus, the Examiner should have provided evidence or a reasoned
explanation as to why a person of ordinary skill in the art would make the
proposed modification and expect such a rearrangement to achieve
predictable results. In this case, the Examiner's failure to do so requires
reversal.
In view of the foregoing, we are constrained to reverse the rejection of
claim 1 as unpatentable over the combination of Altmann and Collins. We,
therefore, also reverse the rejection of claims 2-7 and 9-11, which depend
directly or indirectly from claim 1.
Claim 8. Claim 8 depends from claim 1. We have already reversed
the rejection of claim 1 as unpatentable over the combination of Altmann
and Collins. Thus, we also reverse the rejection of claim 8 as unpatentable
over this combination of references.
Claim 18. Appellant argues that the rejection of claim 18 should be
reversed for at least the same reasons that the rejection of claim 1 should
have been reversed. Appeal Br. 9-15. Because we have determined that the
rejection of claim 1 is not sustainable, we also reverse the rejection of
claim 18. Thus, we also reverse the rejection of claims 19 and 20.
Rejections 2 and 3. Appellant argues that claims 12-17 are
patentable for the same reasons as claim 1 because they depend, directly or
indirectly, from claim 1. Appeal Br. 16. Because we have reversed the
rejection of claim 1, we also reverse the rejection of claims 12-17.
8
Appeal2018-000467
Application 13/770,005
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1-
20 as obvious.
REVERSED
9