Farooq, Mukta G. et al.

Patent Trials and Appeals Board

Jan 28, 2020

13409643 - (D) (P.T.A.B. Jan. 28, 2020)

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.
13/409,643 03/01/2012 Mukta G. Farooq FIS920070109US2 5433
45094 7590 01/28/2020
HOFFMAN WARNICK LLC
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EXAMINER
GRAYBILL, DAVID E
ART UNIT PAPER NUMBER
2894
NOTIFICATION DATE DELIVERY MODE
01/28/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MUKTA G. FAROOQ, IAN D. MELVILLE,
KEVIN S. PETRARCA, and KENNETH P. RODBELL

Appeal 2019-002112
Application 13/409,643
Technology Center 2800
____________

Before ROMULO H. DELMENDO, CHRISTOPHER L. OGDEN, and
LILAN REN, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1–6, 9, 16, 23, 24, 29–32, and 34.2
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies “International Business Machines
Corp.” as the real party in interest (Appeal Brief filed July 23, 2018
(“Appeal Br.”) at 1).
2 See Appeal Br. 5–10; Reply Brief filed December 28, 2018 (“Reply Br.”)
at 2–11; Final Office Action entered March 27, 2018 (“Final Act.”) at 4–26;
Examiner’s Answer entered October 31, 2018 (“Ans.”) at 4–25.
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Application 13/409,643

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I. BACKGROUND
The subject application is a divisional of Application 11/836,819 filed
August 10, 2007 (“parent application”). The parent application issued as US
8,999,764 B2 on April 7, 2015 to the same inventive entity named in the
current application.
The subject matter on appeal relates to an integrated circuit (IC) chip
with reduced “soft errors” caused by ionizing radiation such as alpha
particles, beta radiation, cosmic rays, high-frequency electromagnetic
radiation, or other types of radiation capable of producing a change in
electrical state (Specification filed March 1, 2012 (“Spec.”) ¶¶ 2–3).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
1. An integrated circuit (IC) chip comprising:
a first layer including at least one of a transistor, a resistor,
a capacitor or an interconnecting wire;
a first metallization layer formed over the first layer; and
at least one dielectric layer formed over the first
metallization layer, the at least one dielectric layer including
ionizing radiation blocking material positioned therein and
forming a complete plane over the first layer and configured to
block or absorb ionizing radiation,
wherein the at least one dielectric layer includes:
a first dielectric layer;
a conductor formed in the first dielectric layer;
a second dielectric layer formed directly over and
contacting the conductor and the first dielectric layer;
a discontinuous ionizing radiation blocking film
formed over at least a portion of the second dielectric
layer, the discontinuous ionizing radiation blocking film
positioned above and overlapping the conductor;
a back end of line (BEOL) dielectric layer formed
over the discontinuous ionizing radiation blocking film;
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an opening formed through the discontinuous
ionizing radiation blocking film and the BEOL dielectric
layer;
a third dielectric layer formed over the BEOL
dielectric layer and a portion of the second dielectric layer;
and
a contact formed through the second dielectric layer
and the third dielectric layer to contact the conductor,
wherein an inner edge of the discontinuous
ionizing radiation blocking film is distanced from an
edge of the contact and separated by the third dielectric
layer, and wherein the conductor laterally overlaps the
opening.
(Appeal Br. 11–12 (emphasis added)).
II. REJECTIONS ON APPEAL
The claims stand rejected under pre-AIA 35 U.S.C. § 103(a), as
follows:
A. Claims 1, 2, 4–6, 9, 16, 24, 29–32, and 34 as unpatentable over
Kong et al.3 (“Kong”), Saito et al.4 (“Saito”), and Trenkler et
al.5 (“Trenkler”); and
B. Claims 3 and 23, and in the alternative, claims 1, 2, 4–6, 9, 16,
24, 29–32, and 34 as unpatentable over Kong, Saito, Trenkler,
and Buynoski et al.6 (“Buynoski”).
(Ans. 4–25; Final Act. 4–26).

3 US 6,180,430 B1, issued January 30, 2001.
4 JP 2002-9074, published January 11, 2002.
5 US 4,890,083, issued December 26, 1989.
6 US 6,207,553 B1, issued March 27, 2001.
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III. DISCUSSION
1. Grouping of Claims
The Appellant relies on the same arguments for all claims on appeal,
focusing only on the two independent claims—i.e., claims 1 and 16
collectively (Appeal Br. 5–10). In addition, the Appellant relies on the same
arguments for both rejections (id.). Therefore, we decide this appeal on the
basis of claim 1, which we designate as representative pursuant to 37 C.F.R.
§ 41.37(c)(1)(iv). Claims 2–6, 9, 16, 23, 24, 29–32, and 34 stand or fall with
claim 1.
2. The Examiner’s Position
The Examiner finds that Kong describes a structure having most of
the limitations recited in claim 1, including the limitations highlighted in
reproduced claim 1 above (Ans. 4–5; Non-Final Act. 5–6). The Examiner
makes a number of determinations with respect to claim 1. For example,
regarding claim 1’s scope encompassing one or more dielectric layers, the
Examiner provides a reason that explains why it would have been obvious to
a person having ordinary skill in the art to duplicate or repeat distinct
dielectric layers (Ans. 8). In addition, the Examiner provides reasons that
explain why it would have been obvious to a person having ordinary skill in
the art to provide a certain dielectric layer thickness and to make the
thicknesses of the first dielectric layer and a contact to be the same, although
such limitations are not specifically recited in claim 1 (id. at 9–10, 12).
Saito was cited to show an integrated circuit or chip into which Kong’s
device may be fabricated (id. at 15). Trenkler was cited as further evidence
to show that copper, which was found to be disclosed in Kong, is inherently
capable of being used for ionizing radiation blocking (id. at 13, 15).
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3. The Appellant’s Contentions
The Appellant does not specifically refute the Examiner’s
combination of Kong with Saito and Trenkler (Appeal Br. 5–10). Rather,
the Appellant’s arguments are limited to the following: (i) that claim 1
“include[s] features previously deemed allowable by the Examiner in [the
parent application]”—i.e., features recited in the limitations highlighted in
reproduced claim 1 above (“wherein an inner edge of the discontinuous
ionizing radiation blocking film is distanced from an edge of the contact and
separated by the third dielectric layer, and wherein the conductor laterally
overlaps the opening”), which were previously presented in claims 20–227
of the parent application (id. at 6–7); (ii) that Kong, Saito, and Trenkler do
not teach or suggest the above-highlighted limitations (id. at 7–8); and (iii)
“the Examiner’s duty to provide a clearly articulated rejection has not been
met” because the Examiner’s rejection spans 19 pages in the Final Office
Action and the rationales for rejecting claim 1 are separated (id. at 8–9).
The Appellant’s arguments fail to identify prejudicial or reversible
error in the Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011).
Regarding the prosecution in the parent application, we are in
agreement with the Examiner’s position that the claims of each application
must be decided on their own merits (Ans. 22–25). Claims 20–22 in the
parent application were directed to an independent and distinct method
comprising specific steps, whereas current claim 1, filed in a divisional
application of the parent, is directed to an integrated chip. In addition,
consistent with the Examiner’s position, the scopes of claims 20–22 are not

7 Application 11/836,819, Amendment filed June 23, 2014.
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coextensive with that of current claim 1. For example, current claim 1 does
not recite the limitation “wherein the second layer forming includes forming
the ionizing radiation blocking layer across more than one second layer, the
ionizing radiation blocking layer being laterally discontinuous in any one
second layer but forming the substantially complete plane in a vertical
sense” found in parent application claim 19 from which claim 20 depended
(Application 11/836,819, Amendment filed June 23, 2014 at 4). Thus,
although the Examiner indicated allowability of claims 20–22 in the parent
application (Application 11/836,819, Office Action August 25, 2014, 9), the
Examiner did not say that these claims were allowable based on the
“features” (i.e., the limitations highlighted in reproduced claim 1 above) that
now form the basis of the Appellant’s argument. But even if we assume that
the Examiner had so stated in the parent application, the PTO has an
obligation to ensure that only patentable claims are issued in the current
application at all times. Cf. BlackLight Power, Inc. v. Rogan, 295 F.3d
1269, 1274 (Fed. Cir. 2002) (“[T]his court sustained extraordinary action
when the [Director] in good faith believed that such action was required to
ensure the issuance of valid patents, observing that ‘the [Director] has an
obligation to refuse to grant a patent if he believes that doing so would be
contrary to law.’”) (internal citation omitted).
Turning to the Appellant’s substantive argument that Kong, Saito, and
Trenkler do not teach or suggest the limitations highlighted in reproduced
claim 1 above (“wherein an inner edge of the discontinuous ionizing
radiation blocking film is distanced from an edge of the contact and
separated by the third dielectric layer, and wherein the conductor laterally
overlaps the opening”), the Examiner provides specific factual findings
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regarding these limitations (Ans. 4–5). The Appellant does not structurally
distinguish the configurations for Kong’s dielectric sidewall spacers (e.g.,
70B), metal structures (radiation blocking films) (e.g., 38B), and contacts
(e.g., 36B) as shown in Figure 5 (col. 5, ll. 42–47; col. 5, l. 60–col. 6, l. 4)
from that shown for the Appellant’s configuration as shown in Figure 6.
Indeed, the Appellant does not address, let alone show reversible error in,
the Examiner’s findings (Appeal Br. 7–8).
The Appellant’s argument that the Examiner’s findings and analysis
are lengthy and poorly organized (e.g., Final Act. 4–26) does not persuade
us of reversible error in the substantive findings in support of the rejection.
The Examiner’s articulated rejection could be more elucidated but is not “‘so
uninformative that it prevents the [A]pplicant from recognizing and seeking
to counter the grounds for rejection.’” Jung, 637 F.3d at 1362 (quoting
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)).
Here, the Examiner provides findings in support of the rejection (e.g.,
Final Act. 5–6). As in Jung, 637 F.3d 1362–63, the Appellant does not
effectively refute them (Appeal Br. 7–9).
For these reasons, we uphold the Examiner’s rejection as maintained
against claim 1, with all other claims standing or falling therewith.

IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1, 2, 4–6, 9, 16,
24, 29–32, 34
103(a) Kong, Saito,
Trenkler
1, 2, 4–6, 9, 16,
24, 29–32, 34

1–6, 9, 16, 23,
24, 29–32, 34
103(a) Kong, Saito,
Trenkler,
Buynoski
1–6, 9, 16, 23,
24, 29–32, 34

Appeal 2019-002112
Application 13/409,643

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Claims
Rejected
35 U.S.C. § References Affirmed Reversed
Overall
Outcome
1–6, 9, 16, 23,
24, 29–32, and
34

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED