Ex parte CHAN et al.

Board of Patent Appeals and Interferences

Jun 2, 1998

08182809 (B.P.A.I. Jun. 2, 1998)

Application for patent filed January 14, 1994. According1
to appellants, this application is a division of Application
07/889,822 filed May 29, 1992, now Patent No. 5,310,692 issued
May 10, 1994.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte TSIU C. CHAN and FRANK R. BRYANT
____________
Appeal No. 96-1656
Application 08/182,8091
____________
ON BRIEF
____________
Before KRASS, JERRY SMITH and CARMICHAEL, Administrative Patent
Judges.
CARMICHAEL, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims
22-39 and 41-45. Claim 40 is the other remaining claim and has
been indicated as directed to patentable subject matter.
Appeal No. 96-1656
Application 08/182,809
2
Our opinion is based solely on the arguments raised by
the appellants in their briefs. We do not address and offer no
opinion on arguments which could have been raised but were not
set forth in the briefs.
Claim 22 reads as follows:
22. A structure consisting of a portion of an
integrated circuit device, comprising:
a substrate of semiconducting material having active
devices in a first surface thereof;
a conductive structure overlying and insulated from a
portion of said first surface of said substrate, and having an
opening therethrough exposing a portion of said substrate;
an oxidized region recessed into an upper surface of
the exposed substrate and laterally abutting a portion of said
conductive structure at sidewalls of said opening, said oxidized
region having a concave upper surface;
an insulating region filling said concave upper surface
of said oxidized region in said opening; and
a planar silicide layer overlying said conductive
structure and said insulating region;
wherein the active devices are laterally isolated only
by said oxidized and insulating regions.
The Examiner’s Answer cites the following prior art:
Morita et al. (Morita) 5,073,813 Dec. 17, 1991
Mazzali 5,122,473 Jun. 16, 1992
Appeal No. 96-1656
Application 08/182,809
3
OPINION
The examiner has entered three different rejections.
First, claims 22 and 24-29 stand rejected under 35 U.S.C. § 102
as anticipated by Morita. Second, claims 22-23 and 30-36 stand
rejected under 35 U.S.C. § 102 or § 103 as anticipated by, or
unpatentable over, Morita. Third, claims 22-23, 37-39, and 41-45
stand rejected under 35 U.S.C. § 103 as unpatentable over Morita
in view of Mazzali.
We will address the three rejections separately.
Anticipation of Claims 22 and 24-29 by Morita
We sustain the examiner’s first rejection (Examiner’s
Answer at 3-5) primarily for the reasons of the examiner, with
the following amplifying comments.
Claims undergoing examination are given their broadest
reasonable interpretation consistent with the specification, and
limitations appearing in the specification are not to be read
into the claims. In re Etter, 756 F.2d 852, 858, 225 USPQ 1, 5
(Fed. Cir. 1985) (in banc).
In the present case the claimed “portion” reads on the
portion between, but not including, Morita’s elements 32. Within
this portion, active devices 36b are separated only by oxidation
region 38 and insulating region 40. Appellants’ arguments about
substituting a two-part field oxide for LOCOS isolation are not
Appeal No. 96-1656
Application 08/182,809
4
commensurate in scope with the claims because the claims do not
prohibit use of LOCOS isolation on other portions of the
integrated circuit device.
Moreover, Morita’s element 32 could be considered part
of the oxidation region. We recognize that one of the disclosed
objects of the invention is to form “an isolation structure
having a surface which is substantially coplanar with the surface
of the adjacent active regions.” Specification at 4. However,
the claims are not so limited.
As to claim 24, we agree with the examiner that
Morita’s element 44 may be included as part of the oxidized
region, while still preserving element 38 as forming an upper
surface of the oxidized region.
Anticipation or Obviousness of Claims 22, 23, and 30-36 over
Morita
The examiner’s second rejection (Examiner’s Answer at
5-6) depends on ignoring “spin-on-glass” as a product by process
limitation failing to distinguish over Morita’s silicon dioxide.
We agree that the examiner thereby stated a prima facie case, but
we find that it was overcome by the declaration of James
Cunningham saying that spin-on-glass has different etching
properties. Therefore, we will not sustain the rejection of
Appeal No. 96-1656
Application 08/182,809
5
claims 23 and 30-36 over Morita alone. We sustain the rejection
of claim 22, which does not have the spin-on-glass limitation.
Obviousness of Claims 22, 23, 37, 38, 39, and 41-45
We sustain the examiner’s third rejection (Examiner’s
Answer at 6-7) primarily for the reasons of the examiner, with
the following amplifying comments.
The mere fact that the prior art may be modified in the
manner suggested by the examiner does not make the modification
obvious unless the prior art suggested the desirability of the
modification. In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d
1780, 1783-84 n.14 (Fed. Cir. 1992).
In the present case, the examiner appropriately relies
on Mazzali for providing motivation to one of skill in the art
for using spin-on-glass in Morita in order to achieve planarity.
Mazzali at column 3, lines 19-47 and column 5, lines 22-25.
Thus, we find that the prior art suggested the desirability of
using spin-on-glass.
It appears that this rejection should have included
claims 30-36 under the same rationale. Therefore, we enter the
following new ground of rejection.
Appeal No. 96-1656
Application 08/182,809
6
NEW GROUND OF REJECTION-37 CFR § 1.196(b)
Claims 30-36 are hereby rejected under 35 U.S.C. § 103
as unpatentable over Morita in view of Mazzali. The rationale is
the same as stated above with respect to the examiner’s third
rejection.
CONCLUSION
The rejection of claims 22 and 24-29 as anticipated by
Morita is sustained. The rejection of claims 23 and 30-36 as
anticipated by or unpatentable over Morita is not sustained. The
rejection of claim 22 as unpatentable over Morita is sustained.
The rejection of claims 22, 23, 37, 38, 39, and 41-45 as
unpatentable over Morita in view of Mazzali is sustained.
A new ground of rejection is entered against claims 30-
36.
In addition to affirming the examiner’s rejection of
one or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec. 1,
1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10,
1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21,
1997)). 37 CFR § 1.196(b) provides, “A new ground of rejection
shall not be considered final for purposes of judicial review.”
Appeal No. 96-1656
Application 08/182,809
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Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request
for rehearing within two months from the
date of the original decision . . . .
37 CFR § 1.196(b) also provides that 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 proceedings (37 CFR
§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment
of the claims so rejected or a showing
of facts relating to the claims so
rejected, or both, and have the matter
reconsidered by the examiner, in which
event the application will be remanded
to the examiner. . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon
the same record. . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in order
to preserve the right to seek review under 35 U.S.C. §§ 141 or
145 with respect to the affirmed rejection, the effective date of
the affirmance is deferred until conclusion of the prosecution
before the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
Appeal No. 96-1656
Application 08/182,809
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If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned to
the Board of Patent Appeals and Interferences for final action on
the affirmed rejection, including any timely request for
reconsideration thereof.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED IN PART-37 CFR § 1.196(b)
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Appeal No. 96-1656
Application 08/182,809
9
Lisa K. Jorgenson
SGS-Thomson Microelectronics, Inc.
1310 Electronics Drive
Mail Station 2346
Carrollton, TX 75006