Ex Parte Mardilovich et al

Patent Trial and Appeal Board

Dec 26, 2012

11855425 (P.T.A.B. Dec. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PETER MARDILOVICH, RANDY HOFFMAN, and GREGORY
HERMAN
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Appeal 2010-005843
Application 11/855,425
Technology Center 2800
____________________

Before ERIC S. FRAHM, DAVID M. KOHUT, and JUSTIN BUSCH,
Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-005843
Application 11/855,425

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 55-61. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Introduction
According to Appellants, the invention relates to “methods,
apparatuses, devices, and/or systems for forming a solution processed
device.” Spec. §Abstract.

STATEMENT OF THE CASE
Exemplary Claim
1

Claim 55 is exemplary and reproduced below:
55. A thin film transistor (TFT), formed substantially by a
process comprising:
depositing a first material over at least a portion of a
substrate by use of one or more solution processes to form a
first material layer, at least a portion of said first material layer
comprising inorganic dielectric material;
depositing a second material over and/or in contact with
at least a portion of said first material layer by use of one or
more solution processes to form a second material layer, at least
a portion of said second material layer comprising organic
dielectric material, to form at least a portion of a dielectric
device layer.

1
While this Decision affirms the Examiner’s decision based on a finding
that each element is present in the prior art, we note that even if Uchida and
Hashimoto did not each disclose every limitation of claim 55, the fact that
the preamble recites that the TFT is “formed substantially by the process”
renders the claim broad enough that a process disclosing a substantial
portion of the limitations may anticipate claim 55 and its dependent claims.
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Application 11/855,425

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Reference
Hashimoto US 6,501,096 B1 Dec. 31, 2002
Uchida US 7,081,640 B2 Jul. 25, 2006

Rejections
Claims 55-61 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Hashimoto.
Claims 55-61 also stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Uchida.

We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2009).

ISSUE 1
35 U.S.C. § 102(b) (Hashimoto): claims 55-61
Appellants argue their invention is not anticipated by Hashimoto.
App. Br. 8-12; Reply Br. 4-7. Appellants argue that: (1) the Examiner’s
construction of “device layer” is too broad; (App. Br. 8-10; Reply Br. 4-7);
(2) the Examiner has not presented a prima facie case of anticipation for
dependent claim 60 (App. Br. 10-11); and (3) the process claimed by
Appellants results in a device that “will likely have a different structure”
(App. Br. 11-12; Reply Br. 8-9).

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Issue 1a: Has the Examiner erred in construing “device layer” to
include planarization layers and thus erred in determining that Hashimoto
discloses “depositing a second material … to form at least a portion of a
dielectric device layer,” as claimed in independent claim 55?
Issue 1b: Has the Examiner presented a prima facie case of
anticipation for dependent claim 60?
Issue 1c: Has the Examiner erred in determining that Appellants have
not shown how their invention differs from the prior art and thus erred in
finding that claims 61 is anticipated by Hashimoto?

ANALYSIS
Appellants argue that a “device layer” indicates “that the layer formed
is a functional component,” and that Appellants’ Specification defines
“device layer.” App. Br. 8. Appellants then argue that, because “the
planarization films [of Hashimoto] are merely structural and not an active
part” of the transistor, the planarization films do not meet the recited
limitation “to form a dielectric device layer.” Id. at 9.
The Examiner finds that Appellants’ Specification does not provide an
explicit definition of “device layer,” but rather provides examples of “what
a device layer ‘may’ be.” Ans. 7. The Examiner also finds that, because the
planarization films of Hashimoto are insulating films, the planarization films
do have functionality. Id. at 8. Finally, the Examiner explains that “claims
55-61 are product-by-process claims that are … limited to the structure
implied by the process steps” and finds that the structure of the Hashimoto
device is substantially identical to Appellants’ claimed structure. Id.
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Therefore, the Examiner concludes that, under the broadest reasonable
interpretation in light of Appellants’ Specification, the claimed “device
layer” reads on Hashimoto’s planarization films. Id.
We agree with the Examiner’s findings and conclusion.
Appellants’ arguments with respect to claim 59 depend upon a finding
that Hashimoto’s planarization films are not “device layers.” App. Br. 10.
However, because we find that Hashimoto’s planarization films are “device
layers,” dependent claim 59 falls with independent claim 55.
Appellants argue that the Examiner has not shown where Hashimoto
discloses the additional limitation of claim 60. However, The Examiner
clearly indicated the portion of Hashimoto relied upon for teaching an
“acrylic polymer,” as recited in dependent claim 60. Ans. 8-9; See also Final
Office Action mailed Apr. 8, 2009, p. 3. Therefore, we find that the
Examiner presented a prima facie case of anticipation with respect to claim
60.
Appellants argue that “[i]t should be readily apparent that a layer
formed from separate particles suspended in a solvent for delivery will likely
have a different structure than a layer formed without such individual
particles.” App. Br. 11. Appellants also assert that the “structure produced
by the recited solution [of claim 61] is the claimed ‘dielectric device layer’
which is a functional part of the claimed transistor.” Reply Br. 8. As
explained above, we agree with the Examiner that the claimed “device
layers” do not require functionality and that Hashimoto’s planarization films
are “device layers,” as claimed by Appellants. Therefore, we are not
persuaded by Appellants’ argument that the claimed device layer structure
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differs from Hashimoto’s planarization films because the “device layer”
created by the claimed process is “a functional constituent of” a transistor.
Id.

ISSUE 2
35 U.S.C. § 102(e) (Uchida): claims 55-61
Appellants argue their invention is not anticipated by Uchida. App.
Br. 12-15; Reply Br. 9-12. Appellants argue that “Uchida teaches oxidizing
a portion of a previously deposited layer,” as opposed to teaching a “solution
process.” App. Br. 12-14; Reply Br. 9-11. Appellants also argue that the
process claimed by Appellants results in a device that “will likely have a
different structure” and that the Examiner has not provided a rationale
showing that the claimed product appears similar to the prior art. App. Br.
14-15; Reply Br. 11-12.

Issue 2a: Has the Examiner erred in determining that Uchida
discloses depositing material using one or more solution processes, as
claimed in independent claim 55?
Issue 2b: Has the Examiner erred in determining that Appellants have
not shown how their invention differs from the prior art and thus erred in
finding that claims 58 and 61 are anticipated by Hashimoto?

ANALYSIS
Appellants argue that their Specification defines “solution processes,”
which requires depositing a “liquid precursor” of the material layer being
formed. App. Br. 12-13. Appellants then argue that Uchida does not
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anticipate claim 55 because “Uchida teaches oxidizing a portion of a
previously deposited layer” as opposed to teaching a “solution process.” Id.
Appellants also assert that “there has been no showing on the record that
Uchida’s gate oxide film 8 would be structurally and characteristically
equivalent to the claimed first material layer deposited.” Id. Finally,
Appellants argue that “[i]t should be readily apparent that a layer formed
from separate particles suspended in a solvent for delivery will likely have a
different structure than a layer formed without such individual particles,”
and that the Examiner has not provided a rational showing that the claimed
device is similar to the Uchida device. App. Br. 14; Reply Br. 12.
The Examiner finds that Appellants’ Specification does not clearly set
forth an explicit definition of “solution processing,” “because it is exemplary
at best as to what a solution process can be.” Ans. 9. The Examiner also
finds that “the phosphonic [sic] acid solution of Uchida … can reasonably be
interpreted to be a liquid precursor because it is a liquid solution that
provides the oxygen source for forming the gate oxide film.” Id. at 10.
Finally, the Examiner explains that “claims 55-61 are product-by-process
claims that are … limited to the structure implied by the process steps” and
finds that the structure of the Uchida device is substantially identical to
Appellants’ claimed structure. Id. Therefore, the Examiner concludes that,
under the broadest reasonable interpretation in light of Appellants’
Specification, the claimed “solution processing” is disclosed by Uchida. Id.
We agree with Appellants that the Specification explicitly defines
“solution processing”:
Solution processing, as used in this context, comprises
one or more processes, wherein a solution, such as a
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substantially 20 liquid solution, for example, which may
additionally be referred to as a liquid precursor in at least one
embodiment, may be deposited on one or more surfaces of a
device, such as on one or more surfaces of a substrate, by use of
one or more deposition processes.

Spec. 4 ll. 18-22. However, the definition is very broad and includes
portions that are merely exemplary embodiments. As found by the
Examiner, the gate oxide film formation step includes depositing a solution
on the substrate. Ans. 10. Contrary to Appellants’ arguments, the solution
may be “referred to as a liquid precursor in at least one embodiment,” and,
as seen by reviewing Appellants’ definition, does not need to be a solution
of the material layer being formed. Appellants’ Spec. 4:18-22 (emphasis
added). Therefore, the process in Uchida meets Appellants’ broad definition
and we agree with the Examiner’s conclusions.
For the same reasons as discussed above with respect to claim 61
being anticipated by Hashimoto, we find that claim 61 is also anticipated by
Uchida. We disagree with Appellants’ contentions.

DECISION
The Examiner’s rejection of claims 55-61 under 35 U.S.C. § 102(b) as
being anticipated by Hashimoto is affirmed.
The Examiner’s rejection of claims 55-61 under 35 U.S.C. § 102(e) as
being anticipated by Uchida 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)(1)(iv) (2011).
Appeal 2010-005843
Application 11/855,425

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AFFIRMED

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