Ex Parte Bethune et al

Patent Trial and Appeal Board

Jun 15, 2016

12727746 (P.T.A.B. Jun. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121727,746 03/19/2010 Donald S. Bethune
108176 7590 06/15/2016
Heslin Rothenberg Farley & Mesiti/ GlobalFoundries
5 Columbia Circle
Albany, NY 12203
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.
5120.002/ARC920090085US1 3889
EXAMINER
BERNSTEIN, ALLISON
ART UNIT PAPER NUMBER
2824
MAILDATE DELIVERY MODE
06/15/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD S. BETHUNE, KAILASH GOP ALAKRISHNAN,
ANDREW J. KELLOCK, and ROHIT S. SHENOY1
Appeal2014-009662
Application 12/727,746
Technology Center 2800
Before MICHAEL P. COLAIANNI, CHRISTOPHER C. KENNEDY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
BACKGROUND
The subject matter on appeal relates to back end of line (BEOL)
compatible high current density access devices for high density arrays of
electronic components. E.g., Spec. 1 :3---6; Claim 1. Claim 1 is reproduced
1 According to the Appellants, the Real Party in Interest is International
Business Machines Corporation. App. Br. 1.
Appeal2014-009662
Application 12/727,746
below from page 16 (Claims Appendix) of the Appeal Brief (some
formatting added):
1. A device, comprising:
a first conductive layer;
a second conductive layer; and
a MsXY 6 layer sandwiched in between said first conductive layer
on top and said second conductive layer on bottom, wherein
(i). M includes at least one element selected from the group
consisting of Cu, Ag, Li, and Zn,
(ii). X includes at least one Group XIV element, and
(iii). Y includes at least one Group XVI element,
wherein said first conductive layer, second conductive layer and
MsXY 6 layer are in proximity to each other, thereby allowing
current to pass through.
REJECTIONS ON APPEAL
1. Claims 1--4, 8-11, 14, and 15 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Pinnow (US 2007/0029538 Al, published Feb. 8,
2007).
2. Claims 5-7, 12, 13, and 16-23 stand rejected under 35 U.S.C.
§ 103 (a) as unpatentable over Pinnow in view of Gopalakrishnan
(US 7,382,647 Bl, issued June 3, 2008).
ANALYSIS
Rejection 1
The Appellants present separate arguments for independent claims 1
and 8. We limit our discussion to those claims. Claims 2--4 depend from
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Application 12/727,746
claim 1 and will stand or fall with claim 1. Claims 9-11, 14, and 15 depend
from claim 8 and will stand or fall with claim 8.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejection. Accordingly, we affirm the rejection for reasons set forth below,
in the Final Action, and in the Examiner's Answer. See generally Final
Act. 2-13; Ans. 2--4.
The Examiner finds that Pinnow anticipates claims 1 and 8.
Concerning claim 1, the Examiner relies on Figure 3E of Pinnow, which
discloses, inter alia, electrodes (i.e., conductive layers) 3 and 6, and
modified solid electrolyte layer 40. Pinnow i-fi-161, 63, 64; Final Act. 2-3.
Pinnow teaches that "[i]f the solid electrolyte element ... initially contains a
chalcogenide, such as germanium-selenide (GeSe) or germanium-sulfide
(GeS), and the precipitates ... contain a metal, e.g. silver, a ternary
compound, such as AgsGeSe6 or AgsGeS6 respectively, is formed." Pinnow
i151. Pinnow emphasizes the importance of "suppress[ing]" formation of
compounds such as AgsGeSe6 or AgsGeS6, because formation of such
compounds "render[ s] inoperable" the solid electrolyte element. E.g., id.
i-fi-f 16, 51, 52, 59. However, Pinnow expressly teaches that "[w]ithout
application of the inventive method to render the solid electrolyte crystalline
before the BEOL part of the CMOS process is carried out, the metal in the
precipitates ... would have formed a stable ternary compound [e.g.,
AgsGeSe6 or AgsGeS6] with the material of the solid electrolyte .... "
Id. i-f 65.
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Appeal2014-009662
Application 12/727,746
Focusing on Pinnow' s teaching that formation of compounds such as
AgsGeSe6 or AgsGeS6 should be suppressed, the Appellants argue, "[g]iven
that Pinnow discloses inhibition/suppression of ternary compounds such as
AgsGeSe6 or AgsGeS6, it would be moot to argue that Pinnow discloses a
device having a [sic] AgsGeSe6 or AgsGeS6 layer." App. Br. 6-10. The
Appellants also focus on Pinnow's manufacturing process and argue that, by
the point at which both conductive layers have been fabricated, the solid
electrolyte layer has been "modified" to the crystalline phase, and formation
of compounds such as AgsGeSe6 or AgsGeS6 has been suppressed. Id.
Therefore, according to the Appellants, Pinnow does not teach a device in
which an MsXY6 is sandwiched between two conductive layers. Id.
We are not persuaded by the Appellants' arguments. The Examiner
"acknowledge[ s] that Pinnow teaches away from using a stable ternary
compound [e.g., AgsGeSe6 or AgsGeS6]." Ans. 2. However, the Examiner
correctly explains that "[a] reference is no less anticipatory if, after
disclosing the invention, the reference then disparages it. The question
whether a reference 'teaches away' from the invention is inapplicable to an
anticipation analysis." Ans. 2 (citing MPEP § 2131.05); see also Celeritas
Tech. Ltd. v. Rockwell Int'! Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998); In
re Malagari, 499 F.2d 1297, 1302 (CCPA 1974).
We agree with the Examiner's analysis. Here, while Pinnow
discourages the formation of compounds such as AgsGeSe6 or AgsGeS6 in
its electrolyte layer, it also discloses an electrolyte layer of AgsGeSe6 or
AgsGeS6, compounds that fall within the scope of claim 1 's MsXY 6 layer.
E.g., Pinnow i-f 51. Although the Appellants insist that Pinnow does not
disclose every limitation of claim 1, e.g., Reply Br. 2-7, Figures 3E and 3F
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Appeal2014-009662
Application 12/727,746
clearly disclose an electrolyte layer sandwiched between conductive layers,
and paragraph 65 expressly teaches that, if Pinnow's particular method is not
used, "the metal in the precipitates ... would have formed a stable ternary
compound with the material of the solid electrolyte," i.e., compounds such
as AgsGeSe6 or AgsGeS6. Thus, while discouraging the formation of such a
device, Pinnow discloses a device that meets every limitation of claim 1.
We therefore affirm the Examiner's rejection of claim 1.
Claim 8 is similar to claim 1 but recites "an MaXb Ye material ...
wherein a is in the range of 48---60 atomic percent, b is in the range of 4--10
atomic percent, c is in the range of 30-45 atomic percent, and a + b + c is at
least 90 atomic percent." The Examiner finds that AgsGeSe6 and AgsGeS6,
disclosed by Pinnow, constitute such an MaXb Ye material. Final Act. 3--4.
The Appellants do not directly dispute that AgsGeSe6 or AgsGeS6
constitute an MaXb Ye material as claimed, but instead argue that "the
Examiner's rejection is silent with regards to any atomic percentages with
regards to Ag, Ge or Se, as [Pinnow] is entirely silent with regards to such
details." App. Br. 12-13.
In the Answer, the Examiner provides calculations showing that the
compounds of Pinnow fall within the atomic percentages of claim 8. Ans. 3.
The Appellants file a Reply Brief but do not contest the Examiner's
calculations. On this record, and in view of the arguments presented, we
affirm the Examiner's rejection of claim 8.
Rejection 2
The Appellants include a separate paragraph in the Appeal Brief
arguing that the § 103 rejection should be reversed because the claims
subject to that rejection "inherit the features of independent claims 1 or 8."
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Application 12/727,746
App. Br. 14; see also Reply Br. 7 ("The above-mentioned arguments with
regards to Applicants' independent claims 1 and 8 substantially apply to [the
claims rejected under § 10 3]. ").
In the Answer, as explained above, the Examiner acknowledges that
Pinnow teaches away from the claimed invention but properly maintains the
rejection of claims 1 and 8 on the basis that "[t]he question whether a
reference 'teaches away' from the invention is inapplicable to an
anticipation analysis." Ans. 2. Teaching away, however, is applicable to an
obviousness analysis under§ 103, and the Examiner provides no explanation
as to how or why the obviousness rejection can be maintained in view of the
Examiner's finding that Pinnow teaches away from the claimed invention.
On this record, we are constrained to reverse the Examiner's obviousness
rejection of claims 5-7, 12, 13, and 16-23.
CONCLUSION
We AFFIRM the Examiner's§ 102 rejection of claims 1--4, 8-11, 14,
and 15.
We REVERSE the Examiner's§ 103 rejection of claims 5-7, 12, 13,
and 16-23.
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-IN-PART
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