Shunpei YamazakiDownload PDFPatent Trials and Appeals BoardSep 4, 201913954012 - (D) (P.T.A.B. Sep. 4, 2019) Copy Citation 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. Appeal 2018-004441 Application 13/954,012 2 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 Appeal 2018-004441 Application 13/954,012 3 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”). Appeal 2018-004441 Application 13/954,012 4 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. Appeal 2018-004441 Application 13/954,012 5 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 Appeal 2018-004441 Application 13/954,012 6 ‘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 Appeal 2018-004441 Application 13/954,012 7 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 Appeal 2018-004441 Application 13/954,012 8 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 Copy with citationCopy as parenthetical citation