Shunpei Yamazaki

Patent Trials and Appeals Board

Sep 4, 2019

13954012 - (D) (P.T.A.B. Sep. 4, 2019)

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.
13/954,012 07/30/2013 Shunpei YAMAZAKI 0756-10213 8637
31780 7590 09/04/2019
Robinson Intellectual Property Law Office, P.C.
3975 Fair Ridge Drive
Suite 20 North
Fairfax, VA 22033
EXAMINER
LIN, JAMES
ART UNIT PAPER NUMBER
1794
NOTIFICATION DATE DELIVERY MODE
09/04/2019 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):
ptomail@riplo.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHUNPEI YAMAZAKI
____________

Appeal 2018-004441
Application 13/954,012
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, JAMES C. HOUSEL, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1–3, 5–9, 11–15, and 17–19. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.3

1 Heard August 23, 2019. The Official Transcript will be made of record in
due course.
2 Appellant is the Applicant, Semiconductor Energy Laboratory Co., Ltd.,
which is identified in the Appeal Brief as the real party in interest (Appeal
Br. 3).
3 Our Decision refers to the Specification (“Spec.”) filed July 30, 2013,
Appellant’s Appeal Brief (“Appeal Br.”) filed December 4, 2017, the
Examiner’s Answer (“Ans.”) dated February 7, 2018, and Appellant’s Reply
Brief (“Reply Br.”) filed March 23, 2018.
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Application 13/954,012

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STATEMENT OF THE CASE
The invention relates to a method for using a sputtering target to form
a crystalline oxide film containing a plurality of metal elements and having a
high orientation. Spec. ¶ 9. The sputtering target includes a polycrystalline
oxide containing a plurality of crystal grains, wherein the grains may each
have a cleavage plane parallel to an a-b plane. Id. ¶¶ 11, 12. An ion
colliding with the target generates a flat-plate-like sputtered particle having a
flat plane whose equivalent circle diameter is greater than or equal to 1/3000
and less than or equal to 1/20, preferably greater than or equal to 1/1000 to
less than or equal to 1/30, of an average grain size of the plurality of crystal
grains. Id. ¶ 11. The sputtered particle may be cut out along the cleavage
plane and a plurality of planes perpendicular to the a-b plane. Id. ¶ 12. The
sputtered particle may also be separated from the cleavage plane, and from
part of a crystal grain, by being cut out along a plurality of planes
perpendicular to the a-b plane in plasma. Id. ¶ 14. The oxide film can be
used for a transparent conductive film or a channel region of a transistor. Id.
¶ 59.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitation at issue
is italicized.
1. A method for using a sputtering target including a
polycrystalline oxide containing a plurality of crystal grains,
wherein the polycrystalline oxide contains indium, zinc, and
one selected from the group consisting of gallium, tin,
aluminum, titanium, nickel, zirconium, lanthanum, cerium,
neodymium, hafnium, tantalum, and tungsten, the method
comprising:
generating a flat-plate-like particle having a flat plane by
making an ion collide with the sputtering target, so that an
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equivalent circle diameter of the flat plane is greater than or
equal to 1/3000 and less than or equal to 1/20 of an average
grain size of the plurality of crystal grains, and
forming an oxide semiconductor film suitable as a
channel region of a transistor by depositing the flat-plate-like
particle.

Independent claim 7 recites a similar method of forming an oxide
semiconductor film suitable as a channel region of a transistor by depositing
sputtered particles, wherein the sputtered particles are generated by ion
collision with the target to cut the particle out along the cleavage plane and a
plurality of planes perpendicular to the a-b plane.
Independent claim 13 recites a similar method of forming an oxide
semiconductor film suitable as a channel region of a transistor by depositing
sputtered particles, wherein the sputtered particles are cut out along a
plurality of planes perpendicular to the a-b plane in plasma from a part of a
crystal grain separated from the cleavage plane by an ion collision with the
target.

REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection:4
1. Claims 1–3, 5–9, 11–15, and 17–19 under 35 U.S.C. § 102(b)
as anticipated by Inoue;5 and

4 Each of the provisional nonstatutory double patenting rejections
maintained by the Examiner in the Answer is moot because the underlying
applications, specifically Application Nos. 13/917,085, 13/942,263,
14/054,081, and 14/280,975, are all abandoned.
5 Inoue et al., US 2004/0180217 A1, published September 16, 2004
(“Inoue”).
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2. Claims 1–3, 5–9, 11–15, and 17–19 on the ground of
nonstatutory double patenting as unpatentable over claims 1–33 of
Yamazaki.6

ANALYSIS
Rejection 1: Anticipation by Inoue
The Examiner finds that Inoue teaches a method of using a sputtering
target including a polycrystalline oxide containing a plurality of crystal
grains, wherein the polycrystalline oxide contains indium, gallium, and zinc.
Ans. 3. The Examiner finds Inoue’s method comprises generating a flat
plate-like particle having a flat plane by making an ion collide with the
target, wherein an equivalent circle diameter of the flat plane is greater than
or equal to 1/3000 and less than or equal to 1/20 of an average grain size of
the crystal grains. Id. In addition, the Examiner finds that Inoue teaches
forming the same film as claimed on a deposition substrate surface by
sputtering the same target as Appellant’s. Id. As such, the Examiner
determines that Inoue’s film would be “suitable as a channel region of a
transistor.” Id. at 4.
Appellant argues that the Examiner erred in finding that Inoue
inherently produces an oxide semiconductor film suitable as a channel
region of a transistor. Appeal Br. 7. Appellant notes that the Examiner
relied on teachings from subsequently filed co-pending Application No.
14/444,286 and prior art publication to Grundmann7 in interpreting Inoue’s
disclosure of forming a “transparent conductive oxide” film as an oxide

6 Yamazaki et al., US 8,889,477 B2, issued November 18, 2014
(“Yamazaki”).
7 Grundmann, The Physics of Semiconductors Part of the Series Graduate
Texts in Physics, September 2010, Pages 511-515.
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semiconductor film suitable as a channel region of a transistor. Id. at 8.
Appellant contends that the Examiner’s interpretation is improper because it
is inconsistent with Appellant’s Specification, citing In re Smith Int’l, 871
F.3d 1375 (Fed. Cir. 2017) as support. Id.
Appellant also contends that the Examiner’s interpretation is
unreasonable because: 1) Those skilled in the art would readily understand
and recognize that semiconductors and conductors are categories of
materials that differ from each other in properties, characteristics, and
applications; 2) Teachings from the later-filed copending application cannot
be relied upon to give meaning to or redefine a term in the present
application that does not otherwise provide a definition; 3) When considered
in its entirety, Grundmann fails to support the Examiner’s interpretation; and
4) Inoue expressly describes materials and ratios thereof to form a
transparent conductive film useful as an electrode, but not to form a
semiconductor film suitable as a channel in a TFT. Id. at 9–10. Appellant
urges that the claims do not broadly recite any oxide semiconductor, but
instead are specifically limited to oxide semiconductors suitable as a channel
region of a transistor. Id. at 10. In this regard, Appellant asserts that the
Examiner failed to establish that all conductors are understood to be
semiconductors and vice versa. Id.
“[A] prior art reference without express reference to a claim limitation
may nonetheless anticipate by inherency.” In re Omeprazole Patent
Litigation, 483 F.3d 1364, 1373 (Fed. Cir. 2007). An inherent characteristic
must be inevitable, and not merely a possibility or probability. See In re
Montgomery, 677 F.3d 1375, 1380 (Fed. Cir. 2012); In re Oelrich, 666 F.2d
578, 581 (CCPA 1981). In general, a limitation is inherent “if it is the
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‘natural result flowing from’ the explicit disclosure of the prior art.”
Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1379 (Fed. Cir. 2003)
(quoting Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 970 (Fed. Cir.
2001)). What is required is that the feature found to be inherent—an oxide
semiconductor film suitable as a channel region of a transistor—inevitably
results from the disclosed materials and steps.
Without considering the merits of Appellant’s other arguments, we are
persuaded that the Examiner failed to carry the burden of establishing that
Inoue inherently teaches forming a semiconductor film suitable as a channel
region of a transistor. In this regard, we note the Examiner does not respond
to Appellant’s argument that Inoue expressly describes materials and ratios
thereof to form a transparent conductive film useful as an electrode, but not
to form a semiconductor film suitable as a channel in a transistor. Appellant
argues that Inoue’s and Appellant’s sputtering targets are different based on
Inoue’s express disclosure of ratios of materials used to form a transparent
conductive film that are different from those disclosed in Appellant’s
Specification.
We note Inoue teaches that an indium thin oxide (“ITO”) has
excellent transparency and electrical conductivity, and that transparent
conductive oxide films comprising indium oxide, zinc oxide, and gallium
oxide maintain the amount of indium oxide at 90–99 mass% in order to
avoid lowering conductivity. Inoue ¶¶ 2, 70. Appellant discloses molar
ratios of indium oxide to gallium oxide to zinc oxide of 2:2:1, 8:4:3, 3:1:1,
1:1:1, 4:2:3, 1:1:2, 3:1:4, and 3:1:2, indicating a reduced amount of indium
oxide than Inoue requires to maintain conductivity. Spec. ¶ 63. The
Examiner fails to direct our attention to any disclosure of Inoue recognizing
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that an oxide semiconductor film suitable as a channel region of a transistor
is formed using ratios of materials similar to those disclosed by Appellant.
Absent such, we are persuaded that Inoue does not teach the formation of an
oxide semiconductor film suitable as a channel region.
Accordingly, we do not sustain the Examiner’s anticipation rejection
by Inoue.
Rejection 2
The Examiner rejects claims 1–3, 5–9, 11–15, and 17–19 on the
ground of nonstatutory double patenting as unpatentable over claims 1–33 of
Yamazaki, concluding that the co-pending claims are not patentably distinct
from each other because each recites a sputtering method using the same
sputtering target. Ans. 7. Appellant argues that Yamazaki’s claims do not
explicitly recite “an ion” or “an equivalent circle diameter of the flat plane is
greater than or equal to 1/3000 and less than or equal to 1/20 of an average
grain size of the plurality of crystal grains.” Appeal Br. 15. In addition,
Appellant contends that Yamazaki’s claims do not recite a sputtering target
“including a polycrystalline oxide containing a plurality of crystal grains
each having an a-b plane and a cleavage plane parallel to the a-b plane,
comprising: generating a particle which is cut out along the cleavage plane
and a plurality of planes perpendicular to the a-b plane by making an ion
collide with the sputtering target,” as recited in claim 7. Id. Appellant
further contends the Examiner has not shown that Yamazaki’s claims
explicitly recite all limitations of independent claims 1, 7, and 13. Id. at 16.
In response, the Examiner finds that Yamazaki’s claims recite a
method of sputtering the same sputter target to deposit flat plate-like
particles on a substrate. Ans. 14. The Examiner further finds that sputtering
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involves bombarding a sputtering target with ions to dislodge particles
therefrom which then are deposited onto a substrate surface. Id. Appellant
does not dispute or otherwise respond to these findings. We note that
Yamazaki’s claim 1 recites “producing sputtered particles by cleaving a
target along an a-b plane of crystals of the target, the target comprising a
polycrystalline oxide semiconductor material comprising indium and zinc,”
claim 4 recites that the particles are flat plate-like shaped, and claim 6 recites
that the target includes gallium. More importantly, Yamazaki explicitly
recites forming an oxide semiconductor film including a crystalline structure
having a c-axis parallel to a normal vector of a surface of the film.
Therefore, Appellant fails to demonstrate any patentable distinction between
Yamazaki’s claims and the claims now before us on appeal.

DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 1–3, 5–9, 11–15, and 17–19 under 35 U.S.C. § 102(b) as anticipated
by Inoue is reversed.
However, based on a totality of the record, and for the reasons given
above and in the Examiner’s Answer, the decision of the Examiner rejecting
claims 1–3, 5–9, 11–15, and 17–19 on the ground of nonstatutory double
patenting as unpatentable over claims 1–33 of Yamazaki 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).

AFFIRMED