Ex Parte Bill et al

Board of Patent Appeals and Interferences

Jun 22, 2009

10935301 (B.P.A.I. Jun. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte COLIN S. BILL and MICHAEL A. VAN BUSKIRK
____________________

Appeal 2009-001409
Application 10/935,3011
Technology Center 2800
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Decided:2 June 22, 2009
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Before MAHSHID D. SAADAT, JOHN A. JEFFERY,
and MARC S. HOFF, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Spansion LLC.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-1409
Application 10/935,301

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-133. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter a new ground of rejection under
37 C.F.R. § 41.50(b).
Appellants’ invention concerns a memory cell array comprising a
semiconductor device that includes a polymer memory cell coupled to a
vertical JFET, wherein the vertical JFET provides selectivity in the
semiconductor device. Voltages can be selectively applied to control
internal current flow through the vertical JFET. As a result, the current flow
is used to manipulate the state of a polymer memory cell coupled to the
vertical JFET. The polymer memory cell comprises a conjugated organic
polymer. By mitigating gaps between gates, or wordlines, and drains of the
vertical JFETs within the memory cell array, the feature size of the memory
cell array can be reduced to permit increased device density (Abstract).
Claim 1 is exemplary:
1. A semiconductor device that facilitates increasing device density in a
memory cell array, comprising:
a vertical JFET that provides selectivity in the semiconductor device;
and
a polymer memory cell that is controlled in part by internal current
flow through the vertical JFET, the polymer memory cell comprises a
conjugated organic polymer.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lazzaroni US 4,663,001 May 5, 1987

3 The rejections of Claims 23-31 have been withdrawn by the Examiner. As
such, claims 23-31 are allowed. Claims 14-22 have been cancelled.
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Perner US 6,636,436 B2 Oct. 21, 2003
Noble US 2004/0132232 A1 Jul. 8, 2004
Rinerson US 6,917,539 Jul. 12, 2005

Claims 1-7 stand rejected under 35 U.S.C. § 103(a) over Perner in
view of Rinerson and further in view of Lazzaroni.
Claims 8-13 stand rejected under 35 U.S.C. § 103(a) over Perner in
view of Rinerson and further in view of Noble.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Appeal Brief (filed January 23, 2007), Reply Brief
(filed June 19, 2007), and the Examiner’s Answer (mailed June 4, 2007) for
their respective details.
ISSUES
Appellants argue that the motivation to combine Perner and Rinerson,
using cost reduction as expressed by the Examiner, would differ
substantially from the motivation of the Appellants (App. Br. 5, Reply Br. 2-
3). Appellants argue that the motivation for the claimed configuration is a
reduction in the critical dimension of the semiconductor device, resulting in
a size reduction of the entire semiconductor array, thereby facilitating a
greater memory density (App. Br. 5, Reply Br. 3). In addition, Appellants
contend that the highly generalized statements of potential intended uses of
the conjugated organic polymer contained in Lazzaroni are not sufficient to
cure the deficiencies of the combination of Perner and Rinerson (App. Br.
5).
The Examiner finds that even though his stated motivation to combine
the references differs from Appellants’, the Examiner’s proposed motivation
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to combine the teachings of Perner and Rinerson is proper (Ans. 8). The
Examiner finds that Lazzaroni teaches that the conjugated organic polymer
is a well known material and is used in semiconductor devices, such as
junctions and transistors (Ans. 10).
Thus, there are two principal issues in the appeal before us:
1. Did Appellants show that the Examiner erred in finding that one
skilled in the art would be motivated to combine the teachings of Perner with
Rinerson to form a semiconductor device comprising a vertical JFET that
provides selectivity in the semiconductor device and a polymer memory cell
that is controlled in part by internal current flow through the vertical JFET?
2. Did Appellants show that the Examiner erred in finding that Perner
in combination with Rinerson and Lazzaroni teaches a semiconductor device
that includes a polymer memory cell which comprises a conjugated organic
polymer?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellants, the invention relates to a polymer
memory cell array that comprises a polymer memory cell that is operably
coupled to a vertical JFET (Spec. para. [0034]).
2. The vertical JFET 604 can be employed to facilitate selection of
a state for the polymer memory cell (e.g. on, off, read, write, erase, etc.)
(Fig. 6; Spec. para. [0034]).
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3. The polymer layer 716 can be a conjugated organic polymer
(Fig. 7; Spec. para. [0039]).
Perner
4. Perner teaches a memory cell that includes a vertical JFET
operably coupled to a magnetic memory cell, wherein the magnetic memory
cell is controlled by the internal current flow through the vertical JFET (col.
4, ll. 59-67; col. 6, l. 42 - col. 7, l. 54).
Rinerson
5. Rinerson teaches that polymer memory cells offer benefits over
MRAM memories such as significantly lower costs (col. 2, ll. 57-59, col. 3,
Table 1).
6. Rinerson teaches that MRAM-MTJ, an emerging memory
technology, has a very complex structure. As such there are problems
scaling the memory cell size which makes it more expensive than other
solutions (col. 2, ll. 34-44).
Lazzaroni
7. Lazzaroni discloses electroconductive polymers that are
conjugate organic polymers (col. 4, ll. 49-67).
8. Lazzaroni teaches that conjugate organic polymers can be used
in microelectronics to make junctions, Schottky barrier gates, and transistors
(col. 4, ll. 49-67).
Noble
9. Noble teaches a memory device including an array of gain cells
that form rows and columns, wherein a write bit line 60 is coupled to the
first source/drain region 32 of write transistor 26 in a memory cell array
(paras. [0024] and [0031]).
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PRINCIPLES OF LAW
By a showing of insufficient evidence of prima facie obviousness or
by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness, the Appellants can overcome a § 103 rejection. (In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill in
the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550
U.S. at 407 (“While the sequence of these questions might be reordered in
any particular case, the [Graham] factors continue to define the inquiry that
controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 415, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 550 U.S. at 415 (citing Graham, 383 U.S. at
12), and reaffirmed principles based on its precedent that “[t]he combination
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of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” Id. The Court
explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

Id. at 417. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
In determining whether a combination of familiar elements is non-
obvious, the court must assess whether a person of ordinary skill in the art
would have some motivation to combine the teachings of one reference with
the teaching of another reference. In re Fulton, 391 F.3d 1195, 1200-02
(Fed. Cir. 2004). Although the motivation or reasoning for combining one
reference may be the same, it is not necessary for the prior art to provide the
same motivation as the applicant to make the claimed invention. Ex parte
Levengood, 28 USPQ2d 1300, 1302 (Bd. Pat. App. & Inter. 1993). In Cross
Medical Products, Inc v. Medtronic Sofamor Danek, Inc, the Plantiff-
Appellee argued that the requisite motivation was not provided to combine
two patent references because the problem that one patent reference
addressed differed slightly from the problem encountered by the second
patent reference. Cross Medical Products, Inc. v. Medtronic Sofamor
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Danek, Inc, 424 F.3d 1293, 1323 (Fed. Cir. 2005). The CAFC concluded
that one of ordinary skill in the art need not see the identical problem
addressed in a prior art reference to be motivated to apply its teachings. Id.,
citing In re Oetiker, 977 F.2d 1443, 1448 (Fed. Cir. 1992) (emphasis added)

ANALYSIS
Claim 1
Appellants argue that the Examiner erred in combining Perner and
Rinerson, since the motivation that the Examiner asserted is different from
the motivation the Appellants disclosed in the Specification (App. Br. 5,
Reply Br. 2-3). Appellants argue that lower cost alone is insufficient
motivation to combine Rinerson with Perner (Reply Br. 3). Appellants
further contend that the claimed configuration, having a vertical JFET and a
polymer memory cell, specifically results in a reduction in the critical
dimension of the semiconductor device, resulting in a size reduction of the
entire semiconductor array, thereby facilitating a greater memory density
(App. Br. 5, Reply Br. 3).
The Examiner finds that Perner teaches a semiconductor device that
facilitates increasing device density in a memory cell array, comprising a
vertical JFET and a magnetic memory cell (Ans. 4), and that Rinerson
teaches that polymer memory cells offer benefits over MRAM memories
such as significantly lower costs (FF 5, Ans. 4).
We agree with the Examiner’s finding that the combination of Perner
and Rinerson meets the limitations of claim 1 that require a semiconductor
device comprising a vertical JFET to provide selectivity of the
semiconductor device and a polymer memory cell (Ans. 4). Rinerson
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teaches that emerging memory technologies having complex structures have
problems scaling the cell size and as a result are more expensive than other
solutions (FF 6). Rinerson teaches that the polymer memory has a lower
cost relative to MRAM (FF 5). Therefore, one skilled in the art would have
been motivated to combine the teachings of Perner, Rinerson, and Lazzaroni
to develop a memory cell array having a reduced size and cost, as the
Examiner found (FF 5).
Additionally, Appellants argue that the combination of Perner and
Rinerson with Lazzaroni is not sufficient to cure the deficiencies of the
combination of Perner and Rinerson, since the statements of potential
intended use made in Lazzaroni are “highly generalized” and insufficient to
motivate one of ordinary skill in the art to combine the references (App. Br.
5). Appellants argue that the Examiner’s reference to the JFET comprising a
conjugated organic polymer is incorrect (Reply Br. 4). Noting that claim 1
recites that the polymer memory cell comprises a conjugated organic
polymer, Appellants argue that the JFET and the polymer memory cell are
two distinct devices (Reply Br. 4). In addition, Appellants argue that since
Lazzaroni teaches employing conjugated organic polymer in the fabrication
of transistors and junctions, and not polymer memory cells, one of ordinary
skill would not have been motivated to substitute the conjugated organic
polymer for the polymer memory layer (Reply Br. 4-5).
The Examiner finds that Perner teaches all of the elements of claim 1
with the exception of the memory cell being a polymer memory cell that
comprises a conjugated organic polymer (Ans. 4). Lazzaroni teaches that
the conjugated polymer is a well known material and is used in
semiconductor devices (FF 7, Ans. 10). Therefore, the Examiner finds that
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the combination of Perner, Rinerson, and Lazzaroni would result in the
claimed invention in that the semiconductor device would comprise a
vertical JFET, a polymer memory cell, wherein the polymer memory cell
comprises a conjugated polymer (Ans. 10).
We are not persuaded by Appellants’ arguments. We agree with the
Examiner’s finding that the combination of Perner, Rinerson, and Lazzaroni
would yield the limitations of claim 1 (Ans. 10). Lazzaroni teaches that
conjugated organic polymer can be used in microelectronics to make
junctions, Schottky barrier gates, and transistors (FF 8). Since memory cell
arrays are formed mostly from transistors and junctions, the combination of
Perner, Rinerson, and Lazzaroni would result in “[t]he combination of
familiar elements according to known methods,” and we conclude that it
would have been obvious because it does no more than yield predictable
results. KSR, 550 U.S. at 415. Finally, the motivation for combining the
prior art to generate the claimed invention need not be the same as the
applicants. Cross Medical Products, Inc., 424 F.3d at 1323. As such, the
Examiner’s cited motivation of cost reduction, as opposed to the Appellants’
cited motivation of size reduction, does not preclude a rejection for
obviousness.
We, therefore, find no error in the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a), and we will sustain the Examiner’s rejection of
claim 1, as well as dependent claims 2-7 not separately argued.
Claims 8-13
Appellants argue that claims 8-13 are patentable over the cited prior
art because the claims depend from claim 1. Appellants argue that since the
Examiner did not cite Lazzaroni in the rejection of claims 8-13, the rejection
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should be reversed (App. Br. 6). Appellants argue further that even if the
Lazzaroni reference were cited, Rinerson, Lazzaroni, and Noble do not cure
the deficiencies asserted with respect to the Perner reference (App. Br. 7).
Even though, as noted supra, we found that Perner in combination
with Rinerson and Lazzaroni teach all the features of claim 1, we cannot
simply infer that the Examiner must have meant to include the Lazzaroni
reference in rejecting dependent claims 8-13. The Examiner did not address
the Lazzaroni reference with respect to the rejection of claims 8-13 in the
‘Response to Argument’ section of his Answer (Ans. 10). We therefore
reverse the Examiner’s rejection of claims 8-13 under 35 U.S.C. § 103(a).

New Grounds of Rejection of claim 8
We make the following new ground of rejection using our authority
under 37 C.F.R. § 41.50(b).
Claim 8 is rejected under 35 U.S.C. § 103 (a) as being unpatentable
over Perner in view of Rinerson and further in view of Lazzaroni and Noble.
As noted supra, we find that Perner in combination with Rinerson and
Lazzaroni teach all the features of independent claim 1 from which claim 8
depends. Perner, Rinerson and Lazzaroni, however, fail to teach a metal
contact inserted into the contact hole.
Noble teaches a memory device including an array of gain cells that
form rows and columns, wherein a metal write bit line 60 is coupled to the
first source/drain region 32 of write transistor 26 and a metal read bit line 90
is coupled to the first source/drain 82 of vertical JFET device 28 in a
memory cell array (FF9).
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It would have been obvious to one of ordinary skill in the art at the
time of the invention to modify the combination of Perner, Rinerson and
Lazzaroni, to include a metal contact similar to the read bit line 90, as is
taught by Noble, to form a bit line contact directly to the drain of the vertical
JFET device.
Although we decline to reject every claim under our discretionary
authority under 37 C.F.R. 41.50(b), we emphasize that our decision does not
mean the remaining claims are patentable. Rather, we merely leave the
patentability determination of the remaining claims to the Examiner. See
MPEP § 1213.02.

CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in finding that one
skilled in the art would be motivated to combine the teachings of Perner with
Rinerson to form a semiconductor device comprising a vertical JFET that
provides selectivity in the semiconductor device and a polymer memory cell
that is controlled in part by internal current flow through the vertical JFET.
Appellants have not shown that the Examiner erred in finding that
Perner in combination with Rinerson and Lazzaroni teaches a semiconductor
device that includes a polymer memory cell which comprises a conjugated
organic polymer.

ORDER
The Examiner’s rejection of claims 1-7 is affirmed. The Examiner’s
rejection of claims 8-13 is reversed.
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We have also entered a new ground of rejection against claim 8 under
37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that, “[a] new grounds of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of proceedings (37 C.F.R. § 1.197 (b) as to the rejected claims:
(1) 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 proceeding will be
remanded to the examiner …

(2) Request that the proceeding be reheard under 37 C.F.R. § 41.52
by the Board upon the same record …
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.1.36(a).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

ELD

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