Ex Parte HUANG et al

Patent Trial and Appeal Board

Dec 11, 2018

13945608 (P.T.A.B. Dec. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/945,608 07/18/2013 Yen-Bin HUANG
95496 7590 12/13/2018
Hauptman Ham, LLP (TSMC)
2318 Mill Road
Suite 1400
Alexandria, VA 22314
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.
T5057-917 1092
EXAMINER
BRASFIELD, QUINTON A
ART UNIT PAPER NUMBER
2814
NOTIFICATION DATE DELIVERY MODE
12/13/2018 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):
tsmc@ipfirm.com
sramunto@ipfirm.com
pair_lhhb@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YEN-BIN HUANG,
CHIEN-MAO CHEN, YU-HSUAN KUO, SHIH-KAI FAN,
CHIA-HUNG LAI, and KANG-MIN KUO
Appeal2018-001619
Application 13/945,608
Technology Center 2800
Before GEORGE C. BEST, N. WHITNEY WILSON, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Under 35 U.S.C. § 134, Appellants 1 appeal final rejection of claims 1-
6, 8-14, 16, 17, and 21-25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as "TAIWAN SEMICONDUCTOR
MANUFACTURING COMPANY, LTD., HSINCHU, TAIWAN." Appeal
Brief 2 ("App. Br.," August 11, 2017). In this opinion, we also refer to the
January 18, 2017, Final Action ("Final Act."), the October 2, 2017,
Examiner's Answer ("Ans."), and the December 1, 2017, Reply Brief
("Reply Br.").
Appeal2018-001619
Application 13/945,608
CLAIMED SUBJECT MATTER
The disclosure is directed to a shallow trench isolation (STI) structure.
Claim 1, reproduced below, is representative:
1. A semiconductor structure, comprising:
a substrate having a first surface;
a shallow trench isolation (STI) structure
extending from the first surface into the substrate, the
STI structure comprising:
a first portion extending from the first
surface into the substrate, the first portion having
an intersection with the first surface; and
a second portion extending away from the
first portion, the second portion having a tip at a
distance away from the intersection in a direction
parallel to the first surface, a dielectric material
filling the first portion and the second portion,
and a shape of the tip is defined based on
crystallographic planes of the substrate,
wherein
the first portion has a sidewall surface extending
from the intersection into the substrate, and
the sidewall surface is substantially perpendicular
to the first surface.
App. Br. 19 (Claims Appendix).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Leung
Liaw
US 6,313,008 Bl
US 8,120,094 B2
2
Nov. 6, 2001
Feb.21,2012
Appeal2018-001619
Application 13/945,608
REJECTION
The Examiner rejects claims 1---6, 8-14, and 16 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Leung and Liaw. Final
Act. 3. 2
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("it has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). Having considered
the evidence presented in this Appeal and each of Appellants' contentions,
we are not persuaded that Appellants identify reversible error. Thus, we
affirm the Examiner's§ 103(a) rejection for the reasons expressed in the
Final Office Action and the Answer. We add the following primarily for
emphasis.
Appellants do not dispute that the various recited components of the
recited structure are described in the prior art. Appellants argue that the
Examiner reversibly erred in rejecting claim 13 because combining Leung
2 The Examiner rejects claim 17 under 35 U.S.C. § 103(a) as unpatentable
over Leung, Liaw, and an additional reference. Final Act. 11. Appellants do
not present argument separate from those for claim 1. App. Br. 16-17.
Claim 17, therefore, stands or falls with claim 1. See id.; see also 3 7 C.F .R.
§ 4I.37(c)(l)(iv). The Examiner indicates that previously rejected claims
21-25 are allowable. Ans. 7.
3 Appellants do not present arguments separate from those for claim 1 for the
obviousness rejection of claims 2---6, 8-14, and 16. App. Br. 16-17. These
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Appeal2018-001619
Application 13/945,608
with Liaw would render Leung unsatisfactory for its intended purpose. App.
Br. 11, Reply Br. 4. Specifically, Appellants argue that the prior art
isotropic etching process in Leung would only produce rounded or balloon
shaped STI features. Use of Liaw's anisotropic etching process, which is
needed to produce the claimed opening in which the "shape of the tip is
defined based on crystallographic planes of the substrate," would render
Leung's STI unsatisfactory for its intended purpose. App. Br. 11.
Appellants do not structurally distinguish the STI produced by the
Examiner's combination of prior art. Their argument regarding whether a
skilled artisan would "reasonably consider adjusting [Leung's] etching
technique" relates only to how a semiconductor structure may be produced,
which is not recited in apparatus claim 1. See App. Br. 11 (arguing that a
skilled artisan would not apply the anisotropic process described in Leung
because of certain "critical step[s]" of the manufacturing process); see also
Reply Br. 6-8 ( arguing that modifying the process in Leung would remove
the "critical step"). "[W]hen a patent claims a structure already known in
the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007)
(citing United States v. Adams, 383 U.S. 39, 50-51 (1966)). In this case, the
references undisputedly teach a semiconductor having the respective
structural limitations and, as Appellants do not present any unpredictable
result argument, we discern no reversible error in the Examiner's
obviousness rejection.
claims, therefore, stand or fall with claim 1 for the obviousness rejection.
See id.; see also 37 C.F.R. § 4I.37(c)(l)(iv).
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Appeal2018-001619
Application 13/945,608
We further note that Leung undisputedly describes both isotropic and
anisotropic etching. See App. Br. 11; Ans. 4. Appellants do not argue that
Leung teaches away from using isotropic etching for producing the STI. See
App. Br. 11-12; see also Reply Br. 5-7. As the Examiner finds, both
isotropic and anisotropic methods may be used to form a STI. Ans. 5. We
are therefore not persuaded that a skilled artisan, when taking the prior art
teaching as a whole, would decline to consider both possible techniques.
Again, apparatus claim 1 does not require any particular process by which
the skilled artisan may use to manufacture the recited structure.
Moreover, the Examiner explains that based on Liaw's teaching to use
a STI structure to separate active areas on a semiconductor substrate, a
skilled artisan would have combined the references. Final Act. 4 ( citing
Liaw 7:35--45). Appellants disagree with the Examiner's rationale asserting
"Leung already achieves this purpose" and, therefore, a skilled artisan would
not "look to Liaw to solve a problem which does not exist in Leung." App.
Br. 14.
In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. . . . [ A ]ny need or problem
known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the
elements in the manner claimed.
KSR, 550 U.S. at 419-20. Because the prior art references seek to solve the
same problem, these is no reversible error in the Examiner's undisputed
findings. Furthermore, the Examiner has articulated reasoning with rational
underpinning to support the obviousness determination. Id. at 418.
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Appeal2018-001619
Application 13/945,608
DECISION
The Examiner's decision is affirmed.
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)(l )(iv).
AFFIRMED
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