Ex Parte Hill et al

Patent Trial and Appeal Board

Aug 18, 2016

13543999 (P.T.A.B. Aug. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/543,999 07/09/2012 CRAIG M. HILL
22500 7590 08/19/2016
BAE SYSTEMS
PO BOX 868
NHQl-719
NASHUA, NH 03061-0868
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.
BAEP-1611 2983
EXAMINER
PARENDO, KEVIN A
ART UNIT PAPER NUMBER
2819
MAILDATE DELIVERY MODE
08/19/2016 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
Exparte CRAIG W. HILL and
ANDREW TS POMERENE
Appeal2015-000970
Application 13/543,999
Technology Center 2800
Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner to reject claims 1-5 of Application 13/543,999
under 35 U.S.C. § 102(b) as anticipated by Kempf. 2 We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the real party in interest as BAE Systems. App. Br. 3.
2 Kempf, US 7,339,254 Bl patented Mar. 4, 2008 (hereinafter "Kempf').
Appeal2015-000970
Application 13/543,999
BACKGROUND
The subject matter on appeal relates to an integrated circuit having
electronic and photonic devices on the same semiconductor substrate, and a
thicker oxide layer in the region of the integrated circuit containing photonic
devices. Spec. 2.
Claim 1, reproduced below with disputed terms italicized, is
representative of the claimed subject matter:
1. An integrated circuit comprising:
a substrate having a first region for accommodating
electronic devices and a second region for accommodating
photonic devices, wherein said first region is directly
adjacent to said second region, wherein said substrate
within said first region is thicker than said substrate within
said second region;
an oxide layer located directly on said substrate within
said first and second regions, wherein said oxide layer
within said first region is thinner than said oxide layer
within said second region; and
a silicon layer located directly on said oxide layer within
said first and second regions.
Claims Appx.
DISCUSSION
Appellants argue that the rejection should be reversed essentially for
two reasons: (1) Kempf s bulk silicon electronic region and optical regions
are not "directly adjacent" as recited in claim 1; and (2) within Kempf s bulk
silicon electronic region, there is no oxide layer located directly on the
substrate. App. Br. 4--5.
The Examiner finds that Kempf s bulk silicon electronic region 244
and optical regions 230 and 232 correspond respectively to the first and
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Appeal2015-000970
Application 13/543,999
second regions recited in claim 1. Ans. 3. The Examiner further finds that
by drawing boundary lines through spacers 234 and 236, so that each spacer
is located partly within the bulk silicon electronic region and partly within
an optical region, Kempf's regions are shown to be "directly adjacent." Id.
As to the claimed oxide layer, the Examiner finds Kempf teaches oxide layer
206 within the optical regions, and an oxide layer having zero thickness
within the bulk silicon electronic region (id.); alternatively, the Examiner
finds that spacers 234 and 236 are oxide layers that satisfy the claimed
limitation. Id.
Appellants' arguments are persuasive of harmful error in the rejection.
Kempf teaches that spacers 234 and 236 are "silicon oxide or other
appropriate dielectric material" (Kempf 4:57---60); as Appellants note,
Kempf explains that "[s]pacers 234 and 236 prevent silicon from growing on
exposed edges of silicon layer 208 during subsequent epitaxial layer
formation." Reply Br. 2 (citing Kempf 4:67-5:2). Indeed, the Examiner
also finds that spacers 234 and 236 are oxide layers. Ans. 3. As such,
spacers 234 and 236 cannot accommodate electronic or photonic devices,
and cannot be considered as within either the first region or the second
region, as recited in claim 1. Therefore, Kempf' s bulk silicon electronic
region and optical regions are not directly adjacent.
As to the "oxide layer" limitation, we are persuaded by Appellants'
argument that "claim 1 positively recites an oxide layer located within the
first region." Reply Br. 3. In view of that claim interpretation, the
Examiner's finding that there is a zero thickness oxide layer within Kempf' s
bulk silicon electronic region (Ans. 3) does not support a finding of
anticipation. Further, having determined supra that Kempf' s spacers 234
and 236 are not within either the claimed first or second region, we conclude
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Appeal2015-000970
Application 13/543,999
the Examiner's finding that spacers 234 and 236 are the claimed oxide layers
is also reversible error.
Because we find reversible error in the rejection of claim 1, and the
Examiner's rejection of the dependent claims does not remedy the errors
identified above, we likewise reverse the Examiner's anticipation rejection
of claims 2-5.
SUMMARY
We reverse the rejection of claims 1-5 under 35 U.S.C. § 102(b) as
anticipated by Kempf.
REVERSED
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