Ex Parte Moriguchi et al

Board of Patent Appeals and Interferences

May 2, 2012

10602266 (B.P.A.I. May. 2, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/602,266 06/23/2003 Masao Moriguchi SLA0770 1706
55286 7590 05/02/2012
SHARP LABORATORIES OF AMERICA, INC.
C/O LAW OFFICE OF GERALD MALISZEWSKI
P.O. BOX 270829
SAN DIEGO, CA 92198-2829
EXAMINER
PADGETT, MARIANNE L
ART UNIT PAPER NUMBER
1717
MAIL DATE DELIVERY MODE
05/02/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte MASAO MORIGUCHI and
APOSTOLOS T. VOUTSAS
________________

Appeal 2010-008958
Application 10/602,266
Technology Center 1700
________________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and CATHERINE Q.
TIMM, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 3-21, 23, 25-44,
and 65-66. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1 and 65 are illustrative:
1. A method for producing polycrystalline silicon, the method
comprising:

forming a film of amorphous silicon;

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using a 2N-shot laser irradiation process to form polycrystalline
silicon in a first area of the film, where the film is exposed to a series of 2-
shot laser irradiation steps, where N is greater than 1 and equal to the
number of steps, and where for each step, the direction of lateral growth is
rotated 90° with respect to the previous step;

selecting a second area, included in the first area;

using a directional solidification (DS) process to anneal the second
area;

wherein exposing the film to a series of 2-shot laser irradiation steps
includes:

in a first step, projecting a first laser beam through a first
aperture pattern oriented in a first direction with respect to the film;
and,

in a second step, projecting the first laser beam through a
second aperture pattern oriented in a second direction, orthogonal to
the first direction, without rotating the silicon film, and without
rotating the aperture patterns.

65. A method for laterally growing crystal grains in predetermined areas
of a previously annealed silicon film, the method comprising:

in a first area of a silicon film, forming polycrystalline silicon having
a plurality of parallel grain boundaries oriented in the first direction, and a
plurality of parallel boundaries oriented in the second direction, orthogonal
to the first direction;

using a directional solidification (DS) annealing process, sequentially
annealing a second area defined by a pair of grain boundaries oriented in the
first direction, intersecting a pair of grain boundaries oriented in the second
direction; and,

in response to the DS annealing, laterally growing crystal grains in the
second area.

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The Examiner relies upon the following references as evidence of
obviousness (Ans. 5):
Yamasaki 5,894,137 Apr. 13, 1999
Im 6,368,945 B1 Apr. 9, 2002
Kawasaki 6,653,657 B2 Nov. 25, 2003
Fukunaga 2004/0142543 A1 Jul. 22, 2004
Sposili ‘835 6,908,835 B2 Jun. 21, 2005
Sposili ‘954 WO 02/086954 A1 Oct. 31, 2002

Appellants’ claimed invention is directed to a method for producing
polycrystalline silicon in a film comprising amorphous silicon. The method
employs a 2N-shot laser irradiation process to form polycrystalline silicon in
a first area of the amorphous film, wherein for each exposure step the
direction of lateral growth is rotated 90º with respect to the previous step. A
first laser beam is projected in the first step through a first aperture pattern
that is oriented in a first direction and, in a second step, the laser beam is
projected through a second aperture pattern oriented in a second direction
which is orthogonal to the first direction. The second, orthogonal direction
is effected without rotating the silicon film and without rotating the aperture
patterns. A directional solidification (DS) process is then used to anneal a
second area within the first area.
The appealed claims stand rejected under 35 U.S.C. § 112 as follows:
(a) claims 25-38, 65, and 66 under § 112, second paragraph,
(b) claims 65 and 66 under § 112, first paragraph, enablement
requirement,
(c) claims 65 and 66 under § 112, first paragraph, written
description requirement,
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(d) claims 25-38 under § 112, first paragraph, enablement
requirement,
(e) claims 1, 3-21, 23 and 25-44 under § 112, first paragraph,
written description requirement.
All the appealed claims stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sposili in view of Yamazaki, and Fukunaga or Kawasaki.
We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner in deciding that the Examiner’s decision to
reject the appealed claims is well founded. We agree, for essentially those
reasons expressed in the Answer, that the claimed subject matter would have
been obvious to one of ordinary skill in the art within the meaning of § 103
in view of the applied prior art. Concerning the § 112 rejections, however,
we will only sustain the rejections set forth in paragraph (e) above.
We consider first the rejection of claims 25-38, 65 and 66 under
§ 112, second paragraph. It is by now well settled that claim language is not
to be read in a vacuum but in light of the Specification as it would be by one
of ordinary skill in the art. While the Examiner maintains that the claim
language “annealing the first area in response to the first and second energy
densities” has multiple possible meanings, we agree with Appellants that one
of ordinary skill in the art would reasonably understand that the annealing
occurs in response to the exposure to two energy densities. Regarding claim
65, we also agree with Appellants that one of ordinary skill in the art would
reasonably understand that the lateral growth of crystal grains in the second
area is the result of DS annealing.
We also concur with Appellants that the Examiner has not reasonably
established that one of ordinary skill in the art would be unable to carry out
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the method recited in claims 65 and 66 in view of the supporting
Specification. The Examiner states that claim 65 recites unlimited or
unspecified microstructures, but Appellants point out that the Specification
explains that Figures 5, 6, 8, 10, 12, and 13 depict a film area having the
recited orthogonal grain boundaries. It should borne in mind that it is not the
function of the claims to exclude possible inoperative embodiments. In re
Dinh-Nguyen, 492 F.2d 856, 858-59 (CCPA 1974); In re Kamal, 398 F.2d
867, 872 (CCPA 1968); In re Sarett, 327 F.2d 1005, 1019 (CCPA 1964).
For essentially the same reason, we will not sustain the Examiner’s rejection
of claims 65 and 66 under § 112, first paragraph, written description
requirement. The claims do not run afoul of the written description
requirement simply because it is possible to broadly interpret the claims in a
way that is not described in the Specification. Again, claim language must
be read in light of the Specification as it would be by one of ordinary skill in
the art.
We further agree with Appellants that the Examiner’s rejection of
claims 25-38 under § 112, first paragraph, enablement requirement, is not
sustainable. The Examiner has not established that one of ordinary skill in
the art would be unable to practice the various combination of steps set forth
in the flow chart of Figure 14. As pointed out by Appellants, the Examiner
has pointed to no contradictions in the Figure when it is read in light of the
context of the present Specification. We point out again that it is not the
function of the claims to specifically exclude possible inoperative
embodiments that may be gleaned from the flow chart.
We will sustain the Examiner’s rejection of claims 1, 3-21, 23, and
25-44 under § 112, first paragraph, written description requirement. We
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agree with the Examiner that Appellants have not established that they had
possession, at the time of filing the present application, of the concept of
projecting the first laser beam through a second aperture pattern oriented in a
second direction orthogonal to the first direction “without rotating the
aperture patterns”. The Specification states that the process uses either
beam-shaping masks or scanning schemes which either rotate the substrate
or rotate the laser beam (p. 6, ll. 12-17). While Appellants maintain that
“[c]laim 1 is written to recite the limitation of a mask with orthogonal
apertures, while explicitly excluding other means that are mentioned in the
Specification” (Br. 16, first para.), Appellants have not refuted the
Examiner’s finding that the Specification fails to disclose any single mask
having orthogonal apertures. While it may be possible to perform the claim
process comprising orthogonal exposures by means other than rotating the
substrate or mask, such as by using a single mask or two masks having
orthogonal apertures, use of the later means is speculative and not described
in the present Specification. Hence, in the absence of means other than
rotating the silicon film or rotating the aperture patterns, we agree with the
Examiner that there is not original descriptive support for the claimed
negative limitation.
We will also sustain the Examiner’s § 103 rejection. There is no
dispute that Sposili discloses a process for producing polycrystalline silicon
by rotating the substrate 90º while performing the equivalent of Appellants’
2N-shot laser irradiation process, i.e., sequential lateral solidification (SLS).
Appellants contend that “none of the references disclose[sic, discloses] a
2N-shot process that is conducted without rotating either the substrate or the
mask” (Br. 18, last para.). However, we fully concur with the Examiner that
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it would have been obvious for one of ordinary skill in the art to rotate the
substrate, or the mask, or to use a mask or masks having orthogonal
apertures. As pointed out by the Examiner, the appealed claims and the
Specification do not recite using a mask having orthogonal apertures, and we
find no merit in Appellants’ argument that hindsight reconstruction is
necessary to find that it would have been a matter of obviousness for one of
ordinary skill in the art to either rotate a mask orthogonally or to use a mask
having orthogonal apertures. As for Appellants’ argument that “none of the
references disclose[sic, discloses] a DS process that is performed on selected
regions of a previously annealed polycrystalline film with grain boundaries”
(id.), Appellants have not refuted the Examiner’s findings set forth at page
20 of the Answer, citing columns 22 and 24 of Sposili.
As a final point, we note that Appellants base no argument on
evidence of unexpected results associated with processes within the scope of
the appealed claims vis-à-vis the process disclosed by Sposili. Furthermore,
it would appear from Appellants’ Specification that the claimed SLS process
and directional solidification process (DS) were known in the art, and
Appellants have not demonstrated that the claimed invention produces
anything other than what would have been expected by combining known
processes.
In conclusion, based on the foregoing, the Examiner’s decision
rejecting the appealed claims is 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

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