Ex Parte Mazzola et al

Patent Trial and Appeal Board

Jul 20, 2016

13751434 (P.T.A.B. Jul. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
131751,434
115173
BSTZ-PII
7590
FILING DATE FIRST NAMED INVENTOR
01/28/2013 Michael S. Mazzola
07/22/2016
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.
5510P309DC 5095
EXAMINER
1279 Oakmead Parkway NADAV,ORI
Sunnyvale, CA 94085-4040
ART UNIT PAPER NUMBER
2811
NOTIFICATION DATE DELIVERY MODE
07/22/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
FIP _Group@bstz.com
jessica_raucci@bstz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL S. MAZZOLA and LIN CHENG
Appeal2015-000082
Application 13/751,434
Technology Center 2800
Before TERRENCE W. McMILLIN, MONICA S. ULLAGADDI, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
.l .... ,1 .... ,....,-TTr'1.r-"\l\1,....Al/'\.r'" T"""1 •-, Appeuants' appeal unaer j) u.~.L. s U4~aJ rrom an bxammer s
Final Rejection of claims 51---62 and 64--67, which constitute all of the
claims pending in this application. Claims 1-50 have been cancelled. App.
Br. 22. Claim 63 has been withdrawn for consideration. Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Power Integrations, Inc. as the real party in interest.
App. Br. 1.
Appeal2015-000082
Application 13/751,434
THE INVENTION
The claimed invention is directed to junction barrier Schottky
rectifiers having epitaxially grown p+-n junctions.
Claim 51, reproduced below with the disputed language italicized, is
illustrative of the claimed subject matter:
51. A junction barrier Schottky rectifier device comprising:
a semiconductor substrate of a first conductivity type;
a semiconductor drift layer above the substrate;
a highly doped epitaxial layer region of semiconductor
material of a second conductivity type different from the first
conductivity type, wherein the highly doped epitaxial layer
region is patterned on the drift layer and forms a junction barrier
therewith, the highly doped epitaxial layer region having an
upper surface and a plurality of sidewalls; and
a plurality of epitaxial drift layer regions of semiconductor
material of the first conductivity type, at least some of the
epitaxial drift layer regions being disposed between sidewalls of
the highly doped epitaxial layer region to electrically couple with
the semiconductor drift layer;
at least one ohmic contact \'l1ith at least a portion of the
highly doped epitaxial layer region; and
at least one Schottky contact with at least some of the
epitaxial drift layer regions of semiconductor material.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Nakagawa us 5,072,287 Dec. 10, 1991
Somero us 5,204,277 Apr. 20, 1993
Hermans son us 6,104,043 Aug. 15, 2000
Friedrichs US 6,936,850 B2 Aug.30,2005
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Application 13/751,434
REJECTIONS2
Claims 51, 52, 54---62, 64, 65, and 67 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Friedrichs in view of Somero and
Nakagawa. Final Act. 3-8.
Claims 53 and 66 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Friedrichs in view of Somero, Nakagawa, and
Hermansson. Final Act. 8-9.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.
We are not persuaded by Appellants' arguments regarding claims 51---62 and
64--67.
Claims 51-57, 59-62, and 64-67
The Examiner finds Friedrichs teaches all of the limitations of claim
51 except that Friedrichs does "not explicitly state that the highly doped
layer region is a highly doped epitaxial layer region." Final Act. 3--4. As
for the epitaxial layer, the Examiner concludes an epitaxial layer is a
product-by-process limitation and the claim covers the claimed structure
regardless of how it is made. Final Act. 5. The Examiner notes the
Appellants have the burden of proof. Id. Alternatively, the Examiner finds
that both Somero and Nakagawa teach epitaxially grown regions and that it
2 The rejection of claims 53 and 66 under (pre-AIA) 35 U.S.C. § 112, first
paragraph, was withdrawn. Ans. 2.
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Appeal2015-000082
Application 13/751,434
would have been obvious to a person of ordinary skill in the art "to form
Friedrichs' s [sic] highly doped layer region as highly doped epitaxial layer
region, in order to improve the device characteristics." Final Act. 5---6.
Appellants argue the Examiner erred in finding the claim obvious.
App. Br. 11-17. Specifically, Appellants focus on the Examiner's
alternative findings. According to Appellants, none of the references teach a
junction barrier Schottky rectifier or a pinch diode with a highly doped
epitaxial layer region, it would not have been obvious to modify the highly
doped layer region in Friedrichs with the epitixial grown layers in Somero
and Nakagawa due to the differences in the references, and the Examiner's
motivation to combine the references was conclusory. Id. In the Appeal
Brief, Appellants did not address the Examiner's conclusion that the claim
was a product-by-process claim and that it is the Appellants burden to show
a structural difference. See App. Br. 11-20.
"It has long been the case that an old product is not patentable even if
it is made by a new process." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580
F.3d 1340, 1366 (Fed. Cir. 2009) citing Gen. Elec. Co. v. Wabash Appliance
Corp., 304 U.S. 364, 373 (1938) ("[A] patentee who does not distinguish his
product from what is old except by reference, express or constructive, to the
process by which he produced it, cannot secure a monopoly on the product
by whatever means produced.") and Cochrane v. Badische Anilin & Soda
Fabrik, 111 U.S. 293, 311 (1884) ("While a new process for producing [the
product] was patentable, the product itself could not be patented even though
it was a product made [by an artificial process] for the first time.").
"However, a new product may be patented by reciting source or process
limitations so long as the product is new and unobvious." Amgen, 580 F.3d
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Appeal2015-000082
Application 13/751,434
at 1366. Accordingly, a product-by-process limitation may only be
patentable if it is different and nonobvious when compared to the prior art,
regardless of how the product is made. Amgen, 580 F.3d 1368-70. That is,
"[i]n determining validity of a product-by-process claim, the focus is on the
product and not on the process of making it." Amgen, 580 F.3d at 1369.
We agree with the Examiner's conclusion that an "epitaxial layer" as
recited in claim 51 is a product-by-process limitation. An epitaxial layer
refers to a layer that was manufactured by a process of growing a layer by
depositing material on a substrate. Although the claim does not recite
traditional product-by-process language, such as a product made by process
X, the broadest reasonable interpretation of "epitaxial layer" is a layer made
by the process of epitaxy.
In the Appeal Brief, Appellants did not address the Examiner's
findings based on the product-by-process claim construction. Specifically,
Appellants did not offer any evidence or argument showing that the structure
in Friedrichs is different from the structure produced by claim 51. See In re
Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983) ("Where a product-by-process
claim is rejected over a prior art product that appears to be identical,
although produced by a different process, the burden is upon the applicants
to come forward with evidence establishing an unobvious difference
between the claimed product and the prior art product."); MPEP
§ 2113 ("Once the examiner provides a rationale tending to show that the
claimed product appears to be the same or similar to that of the prior art,
although produced by a different process, the burden shifts to applicant to
come forward with evidence establishing an unobvious difference between
the claimed product and the prior art product.").
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Application 13/751,434
Appellants have not identified any errors in the Examiner's findings
regarding the product-by-process determination. "If an appellant fails to
present arguments on a particular issue- or, more broadly, on a particular
rejection -the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection." Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential). Therefore, Appellants have not persuaded
us the Examiner erred.
Because we find that the Examiner did not err in the product-by-
process analysis, we need not address the Examiner's alternate ground as it
is moot.
According! y, we sustain the Examiner's rejection of claims 51, along
with the rejections of claim 64, which is argued on the same grounds, and
claims 52-57, 59---62, and 65---67, which are not argued separately.
Claim 58
Appellants argue Friedrichs does not teach of suggest "epitaxial drift
layer regions hav[ing] a different dopant concentration than the
semiconductor drift layer," as recited in claim 58. App. Br. 18-19. Instead,
Appellants argue the Examiner maps both the epitaxial drift layer regions
and the semiconductor drift layer to epitaxially grown layer 11 in Friedrichs
and Friedrichs states epitaxially grown layer 11 has a dopant concentration
of 1016 cm-3. App. Br. 18. According to Appellants "Friedrichs neither
describes nor suggests that the portions of layer 11 that are disposed between
sidewalls of strongly p-doped second semiconductor regions 201 have a
different dopant concentration than the portion of layer 11 on which strongly
p-doped second semiconductor regions 201 is patterned." Id. Appellants
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Application 13/751,434
argue it would not have been obvious to modify Friedrichs to have different
dopant concentrations in the different regions and the Examiner provides no
articulated reason for the modification. Id. at 19-20.
The Examiner finds "the epitaxial drift layer regions have a different
dopant concentration than the semiconductor drift layer in prior art's device,
because the dopant concentration near the surface of the layer is higher than
the dopant concentration at the bottom of the layer." Final Act. 7; see also
Ans. 7 ("It is well known in the art that the doping concentration of a
semiconductor layer is not constant throughout the layer, since the doping
concentration is always a little higher at the top surface of the layer than at
the bottom surface of the layer." Id. at 12 (emphasis omitted)).
When an Examiner relies on official notice, in order to adequately
traverse the finding Appellants "must specifically point out the supposed
errors in the examiner's action, which would include stating why the noticed
fact is not considered to be common knowledge or well-known in the art."
MPEP § 2144.03(C). A general denial is insufficient and Appellants must
make reference to the Examiner's assertion of official notice. Id. Once the
rejection is adequately traversed, the Examiner "must provide documentary
evidence in the next Office action if the rejection is to be maintained." Id.
Although the Examiner relied on official notice in the Final Action,
Appellants did not traverse the taking of official notice and request
documentary evidence until the Reply Brief. Compare App. Br. 18-20, with
Reply Br. 6 (Appellants "traverse[] this Official Notice and requests that
documentary evidence supporting the examiner's conclusion be provided.").
Because Appellants' argument was presented for the first time in the reply
brief, it has been waived. Optivus Technology, Inc. v. Ion Beam
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Application 13/751,434
Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006); accord Ex parte
Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010) (informative opinion)
(absent a showing of good cause, the Board is not required to address an
argument newly presented in the reply brief that could have been presented
in the principal brief on appeal); 37 C.F.R. § 41.41(b)(2) (same). This is
especially true in this case where the Examiner does not have the
opportunity to submit the documentary evidence required by MPEP
§ 2144.03(C) when the issue is raised for the first time in the Reply Brief.
Because none of the arguments in the Appeal Brief were directed to
the Examiner's taking of official notice and arguments raised for the first
time in the Reply Brief are waived, we sustain the Examiner's rejection of
claim 58.
DECISION
For the above reasons, we affirm the Examiner's decisions rejecting
claims 51---62 and 64--67.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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