Ex Parte Cheng et al

Board of Patent Appeals and Interferences

Mar 21, 2012

10710166 (B.P.A.I. Mar. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KANGGUO CHENG, RAMACHANDRA DIVAKARUNI,
and OLEG GLUSHENKOV
____________________

Appeal 2009-012572
Application 10/710,166
Technology Center 2800
____________________

Before ALLEN R. MacDONALD, DAVID M. KOHUT and BRUCE R.
WINSOR, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012572
Application 10/710,166

2
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows
(emphasis added):
Claim 1. A vertical transistor, comprising:
a substrate having an insulator layer formed thereon and a
trench formed in said substrate and said insulator layer, said trench
having an upper section with sidewalls extending through said
insulator layer to an upper surface of said substrate and having a lower
section with sidewalls extending from said upper surface of said
substrate into said substrate;
an epitaxial semiconductor region formed adjacent to at least
one of said upper trench sidewalls;
an upper terminal region and a lower terminal region formed in
said epitaxial semiconductor region, wherein said upper terminal
region is separated from said lower terminal region by a channel
region;
a gate insulator extending from said upper terminal region to
said lower terminal region and in contact with said channel region;
and
a gate conductor formed on said gate insulator, said gate
insulator isolating said gate conductor from said channel region.

Appeal 2009-012572
Application 10/710,166

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Rejections
1

The Examiner rejected claim 1 under 35 U.S.C. § 102(b) as being
anticipated by Ozaki (US 5,216,266).
The Examiner rejected claim 1 under 35 U.S.C. § 102(b) as being
anticipated by Radens (US 6,566,177 B1).
The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Ozaki and Cheng (US 2005/0059214
A1).
The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Radens and Cheng.

Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting the
claims because:
The claimed vertical transistor is characterized by the presence
of the terminals (source/drain) in an epitaxial semiconductor
region. Appellants submit that the term “epitaxial” infers the
structural characteristic of monocrystallinity and is commonly
understood by those of ordinary skill in the art to be
synonymous with the structural characteristic of
monocrystallinity. In support of this position, appellants submit
the El-Kareh literature reference (made of record in response to
the final rejection) which indicates that epitaxy refers to the
growth of a single crystal layer on a single crystal substrate.
(App. Br. 2).

1
Separate patentability is not argued for claims 2-4 and 6-12. Except for our
ultimate decision, these claims are not discussed further herein.
Appeal 2009-012572
Application 10/710,166

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2. Appellants contend that the Examiner erred in rejecting the
claim 1 based on Ozaki because:
As noted above, appellants submit that the term "epitaxial"
cannot be simply disregarded as a process limitation in the
present structure claims. Rather, the term "epitaxial" does
define a physical characteristic of the silicon region, namely
that it is of a monocrystalline nature.
(App. Br. 4).
3. Appellants contend that the Examiner erred in rejecting the
claim 1 based on Radens because:
[A]ppellants submit that the term "epitaxial" cannot be simply
disregarded as a process limitation in the present structure
claims. Rather, the term "epitaxial" does define a physical
characteristic of the silicon region, namely that it is of a
monocrystalline nature.
(App. Br. 4).
4. Appellants contend that the Examiner erred in rejecting claim 5
based on Ozaki and Cheng for the same reason set forth in above contention
2. (App. Br. 5).
5. Appellants contend that the Examiner erred in rejecting claim 5
based on Radens and Cheng for the same reason set forth in above
contention 3. (App. Br. 6).

Issue on Appeal
Did the Examiner err in rejecting claims 1 and 5 because Ozaki and
Radens each fail to teach the “epitaxial” limitation of claim 1 requires the
monocrystalline nature argued by Appellants?

Appeal 2009-012572
Application 10/710,166

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ANALYSIS
Appeal Brief
We have reviewed the Examiners‟ rejections in light of Appellants‟
contentions that the Examiner has erred. We disagree with Appellants‟
ultimate conclusions. Rather, we concur with the conclusion reached by the
Examiner.
While we agree with Appellants that “the term „epitaxial‟ cannot be
simply disregarded as a process limitation in the present structure claims”
and that “the term „epitaxial‟ does define a physical characteristic of the
region”; we disagree with Appellants that the term “epitaxial” requires
silicon and we disagree that the term “epitaxial” requires “a monocrystalline
nature” as argued.
Appellants‟ do not point to any portion of the Specification to support
the argued limited definition of the term “epitaxial”, and our review of
Appellants‟ Specification finds no such support. Instead, Appellants cite to
the El-Kareh reference without any explanation as to why that reference
should be treated as definitional for the term. We decline to treat the
El-Kareh reference as controlling given the ready availability of technical
dictionaries specific to the field of this invention.
The Prentice-Hall Illustrated Encyclopedic Dictionary of Electronics
(1987) defines “epitaxial” as:
Having the same structure as an underlying layer. Used to
describe the process of growing a crystal layer upon another
crystal so that the new crystal has the same crystalline structure
as the one on which it is grown.
Appeal 2009-012572
Application 10/710,166

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The Microsoft Press Computer Dictionary (1991) defines “epitaxial
layer” as:
A layer in a semiconductor that has the same crystal orientation
as the underlying layer; more generally, any thin semiconductor
layer deposited during fabrication of a transistor or an
integrated circuit.
Neither of these “epitaxial” definitions is limited to “silicon” or “a
monocrystalline nature” as argued by Appellants. We conclude that the sole
structural limitations argued by Appellants are not in fact required by the
term “epitaxial.”

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-4, 6, and 9 as
being anticipated under 35 U.S.C. § 102(b).
(2) The Examiner has not erred in rejecting claims 5-8 and 10-12 as
being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1-12 are not patentable.

DECISION
The Examiner‟s rejections of claims 1-12 are affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ELD