Ex Parte Ohmi et al

Patent Trial and Appeal Board

Mar 3, 2016

12385868 (P.T.A.B. Mar. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/385,868 0412212009 Tadahiro Ohmi
22428 7590 03/07/2016
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
039262-0218 1914
EXAMINER
TYNES JR., LAWRENCE C
ART UNIT PAPER NUMBER
2816
NOTIFICATION DATE DELIVERY MODE
03/07/2016 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TADAHIRO OHMI and ICHIRO TAKAHASHI
Appeal2014-003030
Application 12/385,868
Technology Center 2800
Before JOSEPH L. DIXON, LIJ\.JZY T. 1\1cCi1~RTNEY, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-003030
Application 12/385,868
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
16-18 and 20-27. Claims 1-15, 19, 28, and 29 are withdrawn. We have
jurisdiction under 35 U.S.C. § 6(b ). An Oral Hearing was requested, but
Appellants waived their appearance in a paper filed Feb. 4, 2016. As a
result, we decide the appeal on the Briefs.
We affirm.
The claims are directed to semiconductor device and method of
manufacturing the semiconductor device. Claim 16, reproduced below, is
illustrative of the claimed subject matter:
16. A method of manufacturing a semiconductor device,
comprising: the step (a) of forming a ferroelectric film containing
Sr, Ta, and Nb as its main components directly on a base film
that contains yttrium oxide.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hwang et al.
Oku
Fujii
0 hmi et al.
us 5,834,804
US 2003/0021479 Al
US 2007 /0004202 Al
US 2007 /0034918 Al
Yano et al. US 5,985,404
(cited in the Examiner's Answer)
REJECTIONS
Nov. 10, 1998
Jan.30,2003
Jan.4,2007
Feb. 15,2007
Nov. 16, 1999
The Examiner made the following rejections:
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Application 12/385,868
Claim 16-18 and 20-23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Oku in view of Hwang.
Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oku in view of Hwang and Ohmi.
Claim 25-27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oku in view of Hwang and Fujii.
ANALYSIS
With respect to claims 16-18 and 20-27, Appellants argue the claims
together. (App. Br. 5). Therefore, we select independent claim 16 as the
representative claim for the group. With respect to representative
independent claim 16, Appellants contend that the teachings of Oku, Hwang,
Ohmi, and Fujii, alone or in combination, do not render obvious the present
claims because none of these references teach or suggest every element
recited in the present claims. (App. Br. 6). Appellants contend that:
the record reveals no reason why the skilled artisan would have
applied the yttrium oxide of Hwang to Oku's method of
manufacturing a ferroelectric device to arrive at the present
claims, particularly when Hwang explicitly in its disclosure
discourages doing so.
(App. Br. 6 (emphasis omitted); see generally Reply Br. 2--4).
The Examiner maintains that Hwang discloses undesirable
characteristics for using yttrium oxide specifically for Hwang's invention.
The Examiner further maintains that those skilled in the art used yttrium
oxide at the time of the invention and that "[i]t is the nature of technological
advancement to improve upon the deficiencies of technology already in
use." (Ans. 3). We agree with the Examiner's findings and conclusion that
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Application 12/385,868
the Hwang reference does not teach away from the claimed invention.
Rather, we agree with the Examiner that the Hwang reference merely
discloses"[ o ]ne widely used ferroelectric material is Pb(Ti, Zr)Q3 ,
commonly referred to as PZT." (Hwang col. 1, 11. 14--15). Hwang
additionally teaches:
Unfortunately, the diffusion-barrier layers which have heretofore
been used with PZT films may have undesirable characteristics.
In particular, the Ti02 which is used in the FRAM of FIG. 1 acts
as a sacrificial barrier by reacting with Pb which diffuses from
the PZT.
(Hwang col. 2, 11. 11-15). Consequently, we disagree with Appellants
that the Hwang reference teaches away from the claimed invention.
The Hwang reference simply teaches considerations with regard to
PZT films with a diffusion barrier layer comprising Ce02 , Y 203 or
YSZ. Likewise, we are not persuaded that Hwang "teaches away"
from Appellants' claimed invention because the failure of a reference
to mention alternatives kno\x1n in the art does not constitute a teaching
away from using the known elements. See DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)
("A reference does not teach away[ ... ] if it merely expresses a
general preference for an alternative invention but does not 'criticize,
discredit, or otherwise discourage' investigation into the invention
claimed") (citation omitted).
Moreover, Appellants have identified no express teaching away in the
Hwang reference regarding "forming a ferroelectric film containing Sr, Ta,
and Nb" recited in the language of independent claim 16. Additionally,
Appellants have provided no intrinsic or extrinsic evidence regarding the use
of yttrium oxides beyond mere attorney argument. Attorney arguments and
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Application 12/385,868
conclusory statements that are unsupported by factual evidence are entitled
to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984). "Argument in the brief does not take the place of evidence in the
record." In re Schulze, 346 F .2d 600, 602 (CCP A 1965) (citing In re Cole,
326 F.2d 769, 773 (CCPA 1964)).
Appellants additionally argue "Examiner's posited combination
of Oku's and Hwang's teachings would render at least Hwang's
teachings unsatisfactory for its intended purpose - namely, the
modification would result in an yttrium oxide base film that Hwang
has explicitly stated as undesirable." (Reply Br. 4). Appellants have
provided no persuasive evidence or reasoning to support this
argument. (See id. at 3--4). In addition, to the extent this argument is
based upon Appellants' teaching away argument, we find the
argument unpersuasive for the reasons discussed above.
On this record, we find Appellants have failed to present
substantive arguments and supporting evidence persuasive of
Examiner error. See In re Baxter Travenol Labs., 952 F.2d 388, 391
(Fed. Cir. 1991) ("It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for
[patentable] distinctions over the prior art.").
As a result, Appellants have not shown error in the Examiner's
obviousness rejection of representative independent claim 16 and
dependent claims 17, 18, and 20-27 which have not been argued
separately.
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CONCLUSION
The Examiner did not err in rejecting independent claim 16 and
dependent claims 17, 18, and 20-27 based upon obviousness.
DECISION
For the above reasons, we sustain the Examiner's obviousness
rejections of claims 16-18 and 20-27.
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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