Ex Parte Barillaro et al

Patent Trial and Appeal Board

Sep 5, 2018

11958945 (P.T.A.B. Sep. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/958,945 12/18/2007
38106 7590 09/07/2018
Seed IP Law Group LLP/ST (EP ORIGINATING)
701 FIFTH AVENUE, SUITE 5400
SEATTLE, WA 98104-7092
Giuseppe Barillaro
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.
854263.446 1931
EXAMINER
WEBB, VERNONP
ART UNIT PAPER NUMBER
2811
NOTIFICATION DATE DELIVERY MODE
09/07/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte GIUSEPPE BARILLARO, 1
Alessandro Diligenti, Caterina Riva, Roberto Campedelli, and Stefano Losa
Appeal 2017-011551
Application 11/958,945
Technology Center 2800
Before MARK NAGUMO, MICHAEL P. COLAIANNI, and
MONTE T. SQUIRE Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Giuseppe Barillaro, Alessandro Diligenti, Caterina Riva,
Roberto Campedelli, and Stefano Losa ("Barillaro") timely appeal
under 35 U.S.C. § 134(a) from the Final Rejection2 of all pending
claims 22--41. We have jurisdiction. 35 U.S.C. § 6.
We reverse.
1 The real party in interest is identified as STMicroelectronics S.r.l. (Appeal
Brief, filed 5 July 2017 ("Br."), 2.)
2 Office Action mailed 13 November 2015 ("Final Rejection"; cited as
"FR").
Appeal 2017-011551
Application 11/958,945
A. Introduction 3
OPINION
The subject matter on appeal relates to a micromechanical "probe
storage" system 14, which is said to enable high data-storage capacities in
small dimensions, with low manufacturing costs. (Spec. 1, 11. 12-15.) Such
systems, also known as "atomic level storage" or "atomic storage" systems
(id. at 13-14) are based on technologies similar to atomic force microscopy.
In such systems, a probe 6 having a sharpened structure with "sub-
lithographic" dimensions (i.e., preferably, smaller than 20 nm; id. at 7, 11. 7-
11) is provided at the free end of a cantilevered [ micro ]beam ("first
supporting element") 5 and is traced over a "storage medium" 4. (Id. at 1,
1. 16-2, 1. 9.) Figure 1, below, shows a prior art probe storage system.
2 J
z~
X
{Figure 1 shows a prior art probe storage system 1}
3 Application 11/958,945, Process for manufacturing a
microelectromechanical interaction system for a storage medium,
filed 18 December 2007, claiming the benefit of an application filed in Italy
on 20 December 2006. We refer to the "'945 Specification," which we cite
as "Spec."
4 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
2
Appeal 2017-011551
Application 11/958,945
Probe storage system 1 comprises an array of interaction systems 2,
each comprising a cantilever 5 and a probe 6, which reads and writes
information on storage medium 4. In the words of the '945 Specification,
"[ r ]eading operations are based on resistance variations occurring in the
interaction system 2 as a function of temperature, or as a result of the
piezoresistive effect due to mechanical deformations, when the interaction
system is moved above the storage medium." (Id. at 2, 11. 24--27 .)
The '945 Specification describes an improved interaction system 2
that is formed from a single crystal of silicon. In embodiments, the tip is
formed from an epitaxial layer deposited on the silicon single crystal in a
region that is prepared by selective P- and N-doping, followed by selective
etching of the N-type conductivity regions to form both the cantilevered
beam 5 and the probe tip 6. Controlling circuitry 25 is provided on the
silicon single crystal using CMOS ( complementary metal oxide
semiconductor) technology. The resulting probe storage system 1 is said to
be less costly than the prior art systems, because composite silicon-on-
insulator ("SOI") wafers are not used, and wafer-to-wafer bonding
techniques to couple the interaction systems to the control electronics, and
the incompatibilities of traditional MEMS formation processes with CMOS
processes are avoided. (Id. at 3, 11. 11-22.)
The Specification illustrates an outline of the process in Figures 2-9,
where in each set of figures, Part-a of each figure shows a top plan view,
while Part-b shows a side cross-section view.. As indicated in Figure 2a,
reproduced on the following page, a supporting element 5 of interaction
system 2 is defined by forming an N-type conductivity region lla, including
subregions 12-14, extending from body region llb. (Id. at 4, 1. 19-5, 1. 9.)
3
Appeal 2017-011551
Application 11/958,945
This N-type conductivity region is on the order of a micron deep in the
monolithic monocrystalline silicon substrate 10. (Id. at 5, 1. 9--11.)
{Figure 2 is reproduced below}
-·-· 11b
11_/
[]'" 11, XL 1_-/ __ .. /10 N i 12 .l,----13
I y
p r \
I \ Fig.2a
11 I \ 10a
14
,,.......- Hm
N ZL
/ / p y I
I
i
Fig.2b I -10 11 14
{Figure 2 shows the first step in the fabrication process, in which selected
regions 11-14 of a P-type conductivity monolithic monocrystalline silicon
substrate 10 are implanted to have N-type conductivity}
Following a series of steps that define various structures in interaction
system 2, including providing CMOS electrical circuitry by standard
methods (id. at 9, 1. 26--10, 1. 6), the assembly is electrochemically wet-
etched, selectively removing N-type conductivity regions, leaving the
probe 6 and the cantilevered supporting element 5 (id. at 7, 1. 18-8, 1. 25) , as
indicated in Figure 9, reproduced on the following page. 5
5 In the words of the Specification, "[ e ]vidently, the same electrochemical
etch does not cause, instead, separation from the substrate 10 of the body
region llb of the doped region 11, given the larger dimensions of the body
region in the plane xy." (Sped. 8, 11. 8-10.)
4
Appeal 2017-011551
Application 11/958,945
{Figure 9 is shown below}
_____________________________________________________ ....,
IX IX
,,..J, ;~ -- = - -- ;z_ ,, ·3-_ ""_"".;.--,_,,", f -{~ :< " .) _ _ : . · 11 b
.. ~-.--,...."-------» ,; !,..J...i
, 14··---~~'" ' ~~'1°1"····'·25 r;----,,------ ----------------------------,----~~1,a~
:~ # !!!!!!!!!!!!!!!!!!!!!!!!!.!!!!!!!.!. .. ~
Fig.=9b
{Figure 9 shows the structure of a micromechanical probe interaction system
after last step of wet-etching that produces cantilevered monocrystalline first
supporting element 5 and first interaction element 6}
Claim 22 is representative and reads:
A microelectromechanical interaction system, comprising:
a single crystal that includes:
a monocrystalline semiconductor substrate [10];
a monocrystalline semiconductor first supporting element [ 5]
extending in cantilever fashion; and
a CMOS control circuit [25]; and
a first interaction element [ 6] carried by said
first supporting element [ 5].
(Claims App., Br. 18; some indentation, paragraphing, emphasis, and
bracketed labels to elements shown in Figures 9A and 9B added.)
5
Appeal 2017-011551
Application 11/958,945
The Examiner maintains the following grounds of rejection 6, 7 :
A. Claims 22, 25, 27, 30, 32-36, and 39 stand rejected under
35 U.S.C. § I03(a) in view of the combined teachings of
Azuma 8 and Yang. 9
Al. Claims 23, 24, 28, 29, 37, and 38 stand rejected under
35 U.S.C. § I03(a) in view of the combined teachings of
Azuma, Yang, and Minne. 10
A2. Claims 26, 31, and 40 stand rejected under
35 U.S.C. § I03(a) in view of the combined teachings of
Azuma, Yang, Hantschel. 11
B. Discussion
The Board's findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Barillaro (Br. 13) urges the Examiner erred in finding that Azuma
describes a single crystal that includes monocrystalline semiconductor
substrate [10] and a monocrystalline semiconductor first supporting
6 Examiner's Answer mailed 14 July 2017 ("Ans.").
7 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
8 Hiroo Azuma et al., Probe and information recording/reproduction
apparatus using the same, U.S. Patent No. 6,477,132 Bl (2002).
9 Chien-Sheng Yang, Capacitive acceleration sensor, U.S. Patent
Application Publication 2--4/0237650 Al (2004).
10 Stephen C. Minne, Method of fabricating a surface probing device and
probing device produced thereby, U.S. Patent No. 6,886,395 B2
(3 May 2005).
11 Thomas Hantschel and Wilfried Vandervorst, Probe tip configuration and
a method of fabrication thereof, U.S. Patent No. 6,328,902 Bl (2001).
6
Appeal 2017-011551
Application 11/958,945
element [ 5] extending in cantilever fashion. This is because, Barillaro
argues, referring to Azuma Figure 16B, shown below,
1105
1110
\
\,,
r
,)
i 104
'///'
1101
/
I
{Fig. 16B shows a detail of schematic lateral cross section of a probe}
although substrate 1103 is made from a first silicon crystal, and
semiconductor layer 1101 is made of a second silicon crystal (id. at 11. 9-10),
"Azuma's substrate 1103 and semiconductor layer 1101 are not part of the
same single crystal as recited in claim 22" (id. at 11. 11-12).
The Examiner responds that "Appellant discloses 'a monocrystalline
semiconductor substrate' and 'a monocrystalline semiconductor first
supporting element extending in cantilever fashion' as separate single
crystal elements." (Ans. 3, 11. 12-14; emphasis added.) "However [sic],"
the Examiner continues, "the disclosure does not appear to describe a 'single
crystal' including a monocrystalline semiconductor substrate and a
monocrystalline semiconductor first supporting element extending in
cantilever fashion." (J d. at 11. 15-1 7.) The Examiner proceeds, "in like
manner" (id. at 1. 18), to find that Azuma describes a similar
microelectromechanical interaction system. (Id. at 3, 1. 18--4, 1. 2.)
The weight of the evidence supports Barillaro. As discussed supra,
the process of making the claimed interaction system illustrated in
Figures 2-9 and described in the Specification at pages 4--10, results in an
7
Appeal 2017-011551
Application 11/958,945
electromechanical interaction system structure in which the substrate 10 and
the cantilevered first support element 5 are parts of the same P-type
conductivity single silicon crystal. No other type of system is described as
an embodiment of the disclosed and claimed invention. Indeed, the claimed
invention is described as a specific improvement over interaction systems in
which the substrate 10 and the cantilevered first support element 5 are
separate crystal structures that must be joined together. Thus, the Examiner
erred in finding that the 945 Specification does not disclose a single crystal
that includes the recited structures. It follows that the Examiner erred in
reading claim 22, minus the CMOS control circuit 25, onto the
electromechanical information recording apparatus described by Azuma.
Because the Examiner makes no findings regarding the teachings of
remaining prior art references Yang, Minne, and Hantschel, that cure this
defect, those errors were harmful.
We therefore reverse the appealed rejections.
C. Order
It is ORDERED that the rejection of claims 22--41 is reversed.
REVERSED
8