Ex Parte Anderson et al

Patent Trial and Appeal Board

Jun 17, 2016

13492108 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/492,108 06/08/2012 Brent A. ANDERSON
44152 7590 06/21/2016
ROBERTS MLOTKOWSKI SAFRAN & COLE, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
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.
BUR920060121 US3 9536
EXAMINER
MAI,ANHD
ART UNIT PAPER NUMBER
2829
NOTIFICATION DATE DELIVERY MODE
06/21/2016 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):
docketing@rmsclaw.com
lgallaugher@rmsclaw.com
dbeltran@rmsclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRENT A. ANDERSON,
ANDRES BRYANT, and EDWARD J. NOWAK
Appeal2014-009386
Application 13/492, 108
Technology Center 2800
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
JON M. JURGOV AN, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 8-10 and 18-22, which are all the claims pending in this
application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is International Business
Machines Corp. (App. Br. 2).
2 Claims 1-7 and 12-17 have been canceled. Claim 11 has been withdrawn
from consideration.
Appeal2014-009386
Application 13/492, 108
STATEivIENT OF THE CASE
Introduction
Appellants' invention relates to improving the performance of a field
effect transistor by imposing dual tensile and compressive stresses in the
device (Spec. i-f 18). Claim 8 is exemplary and reads as follows:
8. A method of fabricating a semiconductor structure,
compnsmg:
forming a semiconductor fin having a first side and a
second side opposite the first side;
bending the semiconductor fin such that tensile stress is
induced in a first region of the semiconductor fin and
compressive stress is induced in a second region of the
semiconductor fin; and
forming a gate structure on the semiconductor fin such
that an inversion channel of the gate structure is disposed at
least partially in the first region.
The Examiner's Rejections
Claims 8-10 and 18-22 stand rejected under 35 U.S.C. § 101 as
failing to comply with the utility requirement (see Ans. 2-3).
Claims 8-10 and 18-22 stand rejected 35 U.S.C. § 112(a) or pre-AIA
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement (see Ans. 3-5).
ANALYSIS
First Issue - Utility Requirement under 3 5 U.S. C. § 101
The Examiner finds the stress induced into a silicon fin by a doped
silicon nitride layer is not sufficient to break the bond between the fin and an
underlying buried oxide layer, thus "bending the semiconductor fin" as
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Appeal2014-009386
Application 13/492, 108
recited in independent claim 8 cannot occur and the claim lacks utility as
wholly inoperative (Ans. 2-3, 6-10). Appellants contend the Examiner has
not provided any factual evidence that quantifies and compares the stress
generated by a doped silicon nitride layer to the bonding force between a
silicon fin and a buried oxide layer, therefore no prima facie case has been
established that claim 8 lacks utility as inoperative (App. Br. 7-8; Reply Br.
4--5). Appellants further contend "bending the semiconductor fin" does not
require breaking the bond between the fin and the underlying layer to
dislocate the fin, rather the fin can be bent at its top portion while remaining
connected to an underlying layer at its bottom portion (App. Br. 8; Reply Br.
5-7).
Appellants' contentions persuade us of Examiner error in the rejection
under§ 101. "To violate [35 U.S.C.] § 101 the claimed device must be
totally incapable of achieving a useful result." (Brooktree Corp. v. Advanced
Micro Devices, Inc., 977 F.2d 1555, 1571 (Fed. Cir. 1992) (citations
omitted)). Here, one of ordinary skill in the art would recognize "bending
the semiconductor fin" could be limited to bending only the top portion of
the fin, as described by Appellants, or achieved by constraining the lattice of
the underlying layer without breaking the bond between the substrate and the
fin. Thus, because we find the method of independent claim 8 is capable of
achieving a useful result, and we do not sustain the Examiner's rejection of
claims 8-10 and 18-22 under 35 U.S.C. § 101.
Second Issue - Enablement Requirement under 3 5 U.S. C.
§ 112, first paragraph
The Examiner finds subject matter of claim 8 lacks enablement
because "bending the semiconductor fin" is not described in Appellants'
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Appeal2014-009386
Application 13/492, 108
disclosure in such a way to enable one of ordinary skill to induce enough
stress into the fin via the doped silicon nitride layer to break the bond
between the fin and the buried oxide layer (Ans. 3-5, 10-14). Appellants
contend the Examiner has not provided sufficient evidence to support a
prima face case showing that one of ordinary skill in the art could not make
or use the claimed invention without undue experimentation (App. Br. 10-
14; Reply Br. 7-8). Appellants provide evidence that a skilled artisan would
understand how to bend a semiconductor fin without dislocating the fin from
an underlying layer (id., citing Stapelmann (US 7 ,902,005 B2) and Anderson
(US 7,400,031 B2)).
Appellants' contentions have persuaded us of Examiner error in
rejecting the claims for lack of enablement. "In order to be enabling under
35 U.S.C. § 112, a patent application must sufficiently disclose an invention
to enable those skilled in the art to make and use it. The specification need
not disclose what is well known in the art." (In re Buchner, 929 F.2d 660,
661 (Fed. Cir. 1991) (citations omitted)). As discussed with respect to the
First Issue, supra, a skilled artisan would recognize the bond between the
semiconductor fin and the underlying layer does not necessarily need to be
broken to bend the fin as claimed. Appellants have identified sufficient
evidence in their disclosure that one of ordinary skill in the art, without
undue experimentation, would be able to induce enough stress into the fin
via the doped silicon nitride layer to bend the semiconductor fin. Thus we
do not sustain the Examiner's rejection of claims 8-10 and 18-22 under
35 U.S.C. § 112, first paragraph.
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Appeal2014-009386
Application 13/492, 108
NEW GROlJ1'-JD OF REJECTION
Claim 8 is rejected under 35 U.S.C. § 102(e) as anticipated by
Anderson (US 7 ,400,031 B2; July 15, 2008). 3
Regarding claim 8, Anderson discloses a method of fabricating a
semiconductor structure (see FinFET device of Figs. 1-3 and accompanying
manufacturing method of Figs. 4A--4D), comprising:
forming a semiconductor fin (e.g., Fig. 1, silicon fin 35 ofnFET 2)
having a first side (side of fin 35 with tensile nitride film 21) and a second
side opposite the first side (opposite side of fin 35, with relaxed nitride film
23);
bending the semiconductor fin such that tensile stress is induced in a
first region of the semiconductor fin and compressive stress is induced in a
second region of the semiconductor fin (col. 5, 11. 11-26: fin bends inward to
put one side under tension and one side under compression); and
forming a gate structure (e.g., Fig. 2, gate 11) on the semiconductor
fin such that an inversion channel of the gate structure is disposed at least
partially in the first region (col. 3, 1. 65 - col. 4, 1. 3: N-channel inversion
region 14 is formed in the side in tension).
DECISION
We reverse the Examiner's decision to reject claims 8-10 and 18-22
under 35 U.S.C. § 101.
3 The applied Anderson reference has common inventors with the instant
application under appeal. Based upon the earlier effective U.S. filing date of
the reference, Anderson constitutes prior art under pre-AIA 35 U.S.C.
§ 102(e).
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Appeal2014-009386
Application 13/492, 108
We reverse the Examiner's decision to reject claims 8-10 and 18-22
under 35 U.S.C. § 112, first paragraph.
In a new ground of rejection pursuant to our authority under 37 C.F.R.
§ 41.50(b), we reject claim 8 under 35 U.S.C. § 102(e) as anticipated by
Anderson.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( l) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
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Application 13/492, 108
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manuel of Patent Examining Procedure (MPEP) § 1214.01 (9th
ed., rev. 07.2015, Nov. 2015).
REVERSED; 37 C.F.R. § 41.50(b)
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