Ex Parte Miyoshi

Patent Trial and Appeal Board

May 20, 2016

12923584 (P.T.A.B. May. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/923,584 09/29/2010
134795 7590 05/24/2016
MICHAEL BEST & FRIEDRICH LLP (DC)
100 E WISCONSIN A VENUE
Suite 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Yasufumi Miyoshi
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.
SON-4024/DIV 3313
EXAMINER
WHALEN, DANIEL B
ART UNIT PAPER NUMBER
2829
NOTIFICATION DATE DELIVERY MODE
05/24/2016 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):
DCipdocket@michaelbest.com
sbj ames@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Y ASUFUMI MIYOSHI
Appeal2014-008099
Application 12/923,584
Technology Center 2800
Before THU A. DANG, NATHAN A. ENGELS, and
JAMES W. DEJMEK, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-008099
Application 12/923,584
I. STATEivIENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 70-95. Claims 1---69 have been canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
A. INVENTION
According to Appellant, the invention relates to "producing a
semiconductor device, a solid-state imaging device" (Spec. 1, 11. 13-15).
B. ILLUSTRATIVE CLAIM
Claim 70 is exemplary:
70. A solid-state imaging device comprising:
a narrow region of a first conductivity-type in physical contact with an
insulating film, said insulating film being on a surface of a semiconductor
substrate;
a compensation region in physical contact with said narrow
region, an impurity of a second conductivity-type within said compensation
region being at least at said surface of the semiconductor substrate; and
an accumulation region of the first conductivity-type between a
photodiode of the second conductivity-type and said insulating film, a
portion of the compensation region overlapping a portion of the
accumulation region.
C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Abe us 5,343,060 Aug. 30, 1994
Claims 70-95 stand rejected under 35 U.S.C. § 112, 1st paragraph, as
failing to comply with the written description requirement.
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Appeal2014-008099
Application 12/923,584
Claims 70-95 stand rejected under 35 U.S.C. § 112, 2nd paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which the Appellant regards as the invention.
Claims 70-75, 94, and 95 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Abe.
II. ISSUE
The principal issue before us is whether the Examiner erred in finding
that Abe teaches a "compensation region" in physical contact with a "narrow
region" wherein "an impurity of a second conductivity-type" within the
compensation region is "at least at said surface of the semiconductor
substrate," as recited in claim 70.
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Abe
Abe discloses a solid state imaging device. Figure 2 of Abe is
reproduced below:
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Appeal2014-008099
Application 12/923,584
Figure 2 discloses a solid state imaging device comprising an N-type
light sensing region 3, a P-type positive electrical charge storage region 6
formed thereon, an N-type register 4, a P-type read-out gate 13 formed
between region 3 and register 4, and a P-type channel stopper region 5
formed within a P-type well region 2 on an N-type silicon substrate 1 (col. 4,
11. 6-24).
IV. ANALYSIS
35 U.S.C. § 112, 1st
The Examiner rejects claims 70-95 under 35 U.S.C. § 112, first
paragraph, as containing "subject matter which was not described in the
specification in such a way as to reasonably convey to one skilled in the
relevant art that the inventor ... , at the time the application was filed, had
possession of the claimed invention" (Final Act. 2). In particular, the
Examiner finds, although the Appellant is relying on "a third embodiment
shown in fig. 8 ... combining with first and second embodiments described
in figs. 4G and 7I ... " for support, "it is noted that the third embodiment
shown in fig. 8 includes a charge accumulation region 115 having the p-type
conductivity at an upper surface" but "fails to teach a compensation region
100 having an-type conductivity at the upper surface ... "(Final Act. 3,
emphasis omitted). The Examiner explains, "[i]t is well known in the art
that a single region ... cannot be both then-type conductivity and the p-type
conductivity simultaneously" (Ans. 3). Thus,
[O]ne of ordinary skill in the art would recognize that the
compensation region (100) overlapping with the accumulation
region (115) having the p-type conductivity in the final product
shown in fig. 8 would not maintain the n-type conductivity
since the portion of the accumulation region overlapping with
the portion of the compensation region is now the p-type
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Application 12/923,584
conductivity,
(id., emphasis omitted).
Citing Appellant's Specification, however, Appellant contends
"according to an embodiment of the present invention, both edges ofa first
conductivity-type element isolation region are covered by a second
conductivity-type impurity, so that the element isolation region may not
become widened and accordingly a photosensor is not narrowed" (App. Br.
13 (citing Spec. 6)). Further, citing pages 23 and 27 of the Specification
(App. Br. 13-14), Appellant contends "the [S]pecification provides a written
description of Figure 8 clearly depicting an n-type conductivity
compensation region 100 at the upper surface of the semiconductor substrate
120" (App. Br. 14). That is, "the drawing figures in the originally-filed
[S]pecification clearly depict an impurity of a second conductivity type (N-
type) within said compensation region ( 11, 100) being at least at said surface
of the semiconductor substrate (2; 120)" (id).
Appellant contends "the Examiner's Answer offers no objective
evidence regarding the possibility of a single region not being both the n-
type conductivity and the p-type conductivity simultaneously" (Reply Br. 6,
emphasis omitted) and the Examiner offers "nothing more than a personal
conclusion that is unsupported by substantial evidence" (Reply Br. 7).
Upon review of the record, we agree with Appellant. In particular, we
agree with Appellant that the Specification does have sufficient support for a
"compensation region" in physical contact with a "narrow region" wherein
"an impurity of a second conductivity-type" within the compensation region
is at least at the surface of the semiconductor substrate, as recited in claim
70. As Appellant points out, "the Examiner is in agreement that the
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Appeal2014-008099
Application 12/923,584
embodiment shown in Figures 4G and 7I of the originally-filed
[S]pecification support then-type impurity of the compensation region (11)
in Figure 8 of the originally-filed [S]pecification, which is at the upper
surface of a semiconductor substrate (1 )" (Reply Br. 14, emphasis omitted).
Thus, we disagree with the Examiner's finding that the Specification, in
particular Figures 4G, 7I and 8, and the description of the Figures, do not
provide support for a "compensation region" in physical contact with a
"narrow region" wherein "an impurity of a second conductivity-type" within
the compensation region is "at least at said surface of the semiconductor
substrate" (claim 70).
Although the Examiner finds "the p-type conductivity in the final
product shown in fig. 8 would not maintain then-type conductivity"
(Ans. 3), we agree with Appellant that the Examiner does not provide
adequate evidence to support that finding ..
Based on the record before us, we are constrained to reverse the
Examiner's rejection of claims 70-95 under 35 U.S.C. § 112, first
paragraph.
35 U.S.C. § 112, 2nd
The Examiner rejects claims 70-95 under 35 U.S.C. § 112, second
paragraph, as "being indefinite" (Final Act. 4). In particular, the Examiner
finds "it is unclear ... whether Applicant is claiming either an intermediate
product (not shown) which includes a charge accumulation region 115
having a p-type conductivity, as a first conductivity-type, not formed at a
surface of a semiconductor substrate 120" or "a final product (shown in fig.
8) which includes a charge accumulation region 115 having a p-type
conductivity as, a first conductivity type, formed at a surface of a
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Appeal2014-008099
Application 12/923,584
semiconductor substrate 120 and in physical contact with an element
isolation region125 ... " (id., emphasis omitted).
However, Appellant points to the Specification and contends "the
metes and bounds of the claimed invention can be readily ascertained" (App.
Br. 16). Based on the record before us, we agree with Appellant.
During prosecution "[a] claim is indefinite when it contains words or
phrases whose meaning is unclear." MPEP § 2173.05(e). Language in a
claim is unclear if it is "ambiguous, vague, incoherent, opaque, or otherwise
unclear in describing and defining the claimed invention ... ,"In re
Packard, 751F.3d1307, 1311 (Fed. Cir. 2014), or if it is "is amenable to
two or more plausible claim constructions .. . ,"Ex Parte Miyazaki, 89
USPQ2d 1207, 1211 (BP AI 2008) (precedential). However, "[b ]readth of a
claim is not to be equated with indefiniteness." MPEP § 2173.04, citing In re
Miller, 441F.2d689, 693 (CCPA 1971).
Here, we disagree with the Examiner's conclusion that it is unclear
whether Applicant is claiming either an "intermediate product" or "a final
product (shown in fig. 8)" (Final Act. 4). In particular, we disagree with the
Examiner that there is any ambiguity as to whether an "intermediate
product" is being claimed by Appellant. Instead, we agree with Appellant
that the language in claims 70-95 reasonably apprise those skilled in the art
of their scope, i.e., a "compensation region" in physical contact with a
"narrow region" wherein "an impurity of a second conductivity-type" within
the compensation region is "at least at said surface of the semiconductor
substrate" (claim 70).
Therefore, we are persuaded the Examiner erred in rejecting claims
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Application 12/923,584
70-95 under 35 U.S.C. § 112, second paragraph.
35 u.s.c. § 102
Appellant contends "the Final Office Action appears to have
fabricated" a "compensation region" of "an n-type conductivity" that "exists
at the upper surface of the substrate within Figure 2 of Abe" (App. Br. 18-
19). In particular, Appellant contends "the shaded area as alleged on page 6
of the Examiner encompasses four ( 4) separate and distinct regions within
Figure 2 of Abe" that include a "P-type positive electric charge storage
region (6)," an "N-type light sensing region (3)," a "P-type region (13)," and
an "N-type vertical register ( 4)" (Reply Br. 29). According to Appellant, of
the four separate and distinct regions within Figure 2, "only the N-type
vertical register (4) is arguably at least at the surface of the semiconductor
substrate (1)" but "there is no disclosure of the N-type vertical register (4) in
Figure 2 of Abe being in physical contact with the p+ -type channel stopper
region (5) of Abe (id.).
Based on the record before us, we agree with Appellant. In particular,
Figure 2 of Abe shows N-type light sensing region 3 and register 4; P-type
positive electrical charge storage region 6 and read-out gate 13; and P-type
channel stopper region 5 (FF). We agree with Appellant that Abe discloses
only the N-type vertical register 4 is at least at the surface of the
semiconductor substrate 1 (Reply Br. 29).
Although the Examiner highlights an area in Figure 2 "that covers the
entire portion of a p-type positive electrical charge storage region ( 6), an
upper portion of a light sensing region (3), an upper portion of a read-out
gate (13), and an upper right portion of an-type vertical register ( 4)" and
finds such area encompasses the claimed "compensation region" (Ans. 7,
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Application 12/923,584
emphasis omitted), we agree with Appellant that Figure 2 shows a plurality
of "separate and distinct" regions 3, 4, 5, 6, and 13, and thus, no
"compensation region" as claimed (Reply Br. 29). That is, although the
Examiner appears to construe "compensation region" to encompass an area
comprising plurality of separate and distinct regions, we find such
interpretation to be overly broad and unreasonable.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification.
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Under the broadest reasonable interpretation standard, claim terms are given
their ordinary and customary meaning as would be understood by one of
ordinary skill in the art in the context of the entire disclosure. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). "Even under
the broadest reasonable interpretation, the Board's construction cannot be
divorced from the specification and the record evidence, and must be
consistent with the one that those skilled in the art would reach." Microsoft
Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (internal
quotations and citations omitted). "Above all, the broadest reasonable
interpretation must be reasonable in light of the claims and specification."
PPC Broadband, Inc. v. Corning Optical Communications RF, LLC, 815
F.3d 747, 755 (Fed. Cir. 2016).
Here, as set forth in Appellant's Specification, a "compensation
region" 11 is formed using hard masks 6 and 9 of the N-type impurity so that
the P-type impurity region 7 is narrowed and the desired narrow and deep
impurity region 7 is formed (Spec. 13, 11. 14--21). That is, as set forth in
Appellant's Specification, a separate and distinct N-type impurity
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Application 12/923,584
"compensation region" is formed using a mask for the purpose of narrowing
the P-type impurity region 7 in physical contact therewith (id.). Thus, based
on the claim language, the Specification, and the evidence of record, we
conclude the Examiner's interpretation of "compensation region" as any area
comprising of a plurality of distinct and separate regions (i.e., P-type storage
region, an portion of an N-type light sensing region, an portion of a P-type
read-out gate, and an portion of a N-type vertical register (Ans. 7) is overly
broad and unreasonable. Accordingly, we agree with Appellant's arguments
that Abe does not teach any N-type "compensation region" that is "in
physical contact with the p+_type channel stopper region (5)" (Reply Br. 29).
We find the preponderance of evidence on this record fails to support
the Examiner's finding that Appellant's claim 70 is anticipated by Abe. We
are of the view that the Examiner has not fully developed the record to show
express or inherent anticipation regarding the disputed limitations of claim
70 pursuant to 35 U.S.C. § 102(b). Therefore, we are constrained to reverse
the Examiner's rejection of claim 70 and claims 71-75, 94, and 95
depending therefrom, over Abe.
V. CONCLUSION AND DECISION
We reverse the Examiner's rejections of claims 70---95 under 35
U.S.C. § 112, 1st and 2nd paragraphs, and of claims 70---75, 94, and 95 under
U.S.C. § 102(a).
REVERSED
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