Ex Parte PFIRSCH et al

Patent Trial and Appeal Board

Sep 5, 2018

14692516 (P.T.A.B. Sep. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/692,516 04/21/2015 Frank PFIRSCH
57579 7590 09/07/2018
MURPHY, BILAK & HOMILLER/INFINEON TECHNOLOGIES
1255 Crescent Green
Suite 200
CARY, NC 27518
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.
1012-1394/2007P51685
USOl
CONFIRMATION NO.
7226
EXAMINER
TORNOW, MARK W
ART UNIT PAPER NUMBER
2891
NOTIFICATION DATE DELIVERY MODE
09/07/2018 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):
official@mbhiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK PFIRSCH and HANS-JOACHIM SCHULZE
Appeal2017-009868
Application 14/692,516 1
Technology Center 2800
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant seeks our review of the
Examiner's rejection of claims 1--4, 7, 8, 12-15, 17, 18, and22-31. App.
Br. 2.
We have jurisdiction. 35 U.S.C. § 6.
We affirm.
1 Appellant is the Applicant, Infineon Technologies Austria AG, and is
identified as the real party in interest. App. Br. 2.
Appeal2017-009868
Application 14/692,516
BACKGROUND
The subject matter on appeal is directed to a semiconductor
component having a recombination zone. Spec. ,r 3; see also Claims 1, 12.
Appellant's Figure 4 illustrates the claimed subject matter of
independent claims 1 and 12, and is copied below from the Specification:
FIG 4
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. 10
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Figure 4 depicts a schematic illustration of an Insulated Gate Bipolar
Transistor (IGBT). Spec. ,r 40.
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Appeal2017-009868
Application 14/692,516
Claim 1 is illustrative of the appealed subject matter, and is copied
below from the Claims Appendix to the Appeal Brief, with emphasis added
to relevant limitations at issue in this appeal:
1. A semiconductor component [30], comprising:
a semiconductor body [ 10] comprising a single
semiconductor substrate [15] and one or more epitaxial
layers [16] grown on the semiconductor substrate [15], the
semiconductor body [ 1 OJ having a front surface [ 40] defined
by an uppermost one of the one or more epitaxial layers and
an opposite rear surface [ 41] defined by the semiconductor
substrate;
a recombination zone [3] formed by impurities
between the front [ 40] and rear [ 41] surfaces of the
semiconductor body [ 10], wherein the impurities act as
recombination centers, and wherein the recombination zone
[3] is spaced apart from both the front [40] and rear [41]
surfaces of the semiconductor body [10] so that a surface
state density at the front [ 40] and rear [ 41] surfaces of the
semiconductor body [10] is unaffected by the recombination
zone [3].
App. Br. 12 (bracketing added).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
I. Claims 1--4, 7, 8, 12-15, 17, 18, and 22-31 under 35 U.S.C.
§ 112, first paragraph as lacking written description; and
II. Claims 1--4, 7, 8, 12-15, 17, 18, and 22-31 under 35 U.S.C.
§ 103(a) as unpatentable over Neilson2 in view of Schultz. 3
2 Neilson et al., US 6,054,369; issued Apr. 25, 2000, (hereinafter
"Neilson").
3 Schulz, Determination of Deep Trap Levels in Silicon Using Ion-
Implantation and CV-Measurements, Applied Physics, Vol. 4, 225-236
( 197 4) (hereinafter "Schulz")
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Appeal2017-009868
Application 14/692,516
OPINION
Rejection I
The Examiner finds that the term "unaffected" in the phrase "a surface
state density ... is unaffected by the recombination zone" recited in
independent claims 1 and 12 lacks written descriptive support within the
meaning of 35 U.S.C. § 112, first paragraph. Final Act. 2-3. In particular,
the Examiner finds that "it is possible that the specific scope of the term
'unaffected' is in fact broader than the disclosure as originally presented
(i.e.[,] the surface has some physical change present, yet still provides the
same measured property value)." Ans. 2. According to the Examiner, "the
term 'unaffected' is not present in the [S]pecification or drawings as filed,
therefore support for the exact scope of that term is not present." Id.
Appellant contends that the Examiner's rejection is in error because
"[t]he plain and ordinary meaning of the term 'unaffected' is 'not influenced
or changed mentally, physically, or chemically,"' and that the plain and
ordinary meaning of the term "unaffected" is consistent with description of
the claimed invention provided in the Specification. App. Br. 6. Appellant
provides evidentiary support for their position. Id.; see also App. Br.
(Evidence App'x), Exhibit A.
We agree with Appellant, and do not sustain this rejection. "In order
to satisfy the written description requirement, the disclosure as originally
filed does not have to provide in haec verba support for the claimed subject
matter at issue." Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320,
1323 (Fed. Cir. 2000). Rather, the disclosure must convey with reasonable
clarity to those skilled in the art that the inventor was in possession of the
invention. See id.
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Appeal2017-009868
Application 14/692,516
Here, Appellant's Specification provides ample disclosure to meet this
standard. For example, Appellant's Specification discloses a semiconductor
body having a recombination zone where "the surface state density at the
front and rear surfaces 40, 41 of the semiconductor body 10 is just as high as
the surface density at a front and rear surface of an identical semiconductor
body without a recombination zone 3." Spec. ,r 38. The disclosure then
explains that "[t]his means that the recombination zone 3 has no influence on
the surface of the semiconductor body." Id. ,r 39 (emphasis added). Such
disclosure is consistent with Appellant's evidence defining the term
"unaffected" as "not influenced or changed mentally, physically, or
chemically." App. Br. (Evidence App'x), Exhibit A. 2.
We, therefore, do not sustain Rejection I.
Rejection II
The dispositive issue we must decide to determine the propriety of
this rejection is whether the Examiner's findings regarding Neilson's
semiconductor structure are sufficient to properly shift the burden to
Appellant to demonstrate that the recited "epitaxial layers grown on the
semiconductor substrate" are structurally different than those disclosed by
Neilson.
Upon consideration of the evidence in this appeal record, we hold that
the Examiner properly shifted the burden to Appellant. Because Appellant
has not made a showing sufficient to rebut the Examiner's obviousness
conclusion, we sustain the Examiner's rejection.
Relevant to this appeal, the Examiner finds that Neilson discloses
"one or more semiconductor layers on the semiconductor substrate." Final
Act. 5 (citing Neilson, Fig. 2C (item 22)). The Examiner finds that the
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Application 14/692,516
recited growing of epitaxial layers is a product-by-process limitation, and
that it is Appellant's burden to show that such process language confers a
structural difference to the layer. Id. 6-7.
Appellant contends that the Examiner erred by giving no patentable
weight to the limitation requiring the layer on the semiconductor substrate to
be "epitaxially grown." App. Br. 7. Specifically, Appellant urges that "as
[an] epitaxial layer grows, it takes on a lattice structure and orientation
identical to that of the substrate." Id. 7-8. Appellant provides evidentiary
support for their construction of the term "epitaxial layer." App. Br.,
(Evidence App'x) Exhibit B. 1. Appellant argues that Neilson is silent
regarding epitaxial layers, and that Neilson's pair of semiconductor wafers,
which are bonded together, have "clear structural differences" than the
claimed one or more epitaxial layers grown on the substrate. App. Br. 8-9.
Appellant argues further that the rejected claims are not in product-by-
process format and, as such, case law dealing with such claims is not
relevant to the instant appeal. Id. 9-10. Finally, Appellant notes that,
because Nielson does not disclose the recited semiconductor body, Nielson's
recombination zones are not spaced as recited in the claims. Id. 10.
Namely, Appellant urges that Nielson's recombination zone is located at the
bonding interface between the two wafers, such zone is not between "front
and rear surfaces of the same type of semiconductor body as claimed." Id.
We are not persuaded of reversible error in the Examiner's
obviousness rejection. Here, the Examiner addresses Appellant's argument
regarding the purported identical "lattice structure and orientation" between
a substrate and an epitaxial layer grown thereon by pointing out that
Neilson's wafer lattice structures may be aligned one with another. Ans. 4--
5 (citing Neilson 4:53-55). Consistent with the Examiner's position, we
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Application 14/692,516
find such disclosure to be sufficient to shift the burden to Appellant to show
a structural "difference between the specifically lattice-aligned structures of
Nielson and epitaxially grown layers upon one another." Id. 5.
We furthermore direct Appellant's attention to Nielson's disclosure
regarding covalent bond formation at the bonding interface sufficient "to
link the two wafers into a single crystal." Nielson 5: 14--23 ( emphasis
added). Such disclosure appears to further undermine Appellant's argument
that Nielson's semiconductor component is structurally different than that
claimed. In other words, if Nielson's wafers are aligned and then link
together to form a single crystal, it is unclear how such a structure is any
different than a layer that is grown from a single crystal wherein the layer
"takes on a lattice structure and orientation identical to that of the substrate"
as argued by Appellant. App. Br. 7-8.
In any event, as correctly noted by the Examiner (Ans. 4), Appellant
has failed to provide evidence demonstrating that when Neilson's wafers are
aligned, Neilson' s semiconductor structure is in fact different than that
recited in independent claims 1 and 12.
Moreover, we disagree with Appellant's position regarding the
relevance of certain "product-by-process" case law. App. Br. 9-10.
Independent claims 1 and 12 unequivocally recite "one or more epitaxial
layers grown on the semiconductor substrate," and therefore recite a product
(i.e., an "epitaxial layer") that is prepared by a process (i.e., "grown"). We,
thus, discern no error in the Examiner's application of settled product-by-
process case law to the independent claims of this application. We
emphasize the Examiner's repeated citation (Final Act. 6, 9, 12; Adv. Act. 2;
Ans. 3, 4) to In re Marosi, 710 F.2d 799 (Fed. Cir. 1983) which is
particularly on point here: "Where a product-by-process claim is rejected
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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." Marosi, 710 F.2d at 803. In this case, the
Examiner identified a prior art product seemingly identical to the structure
recited in independent claims 1 and 12. Final Act. 5-7, 8-10. In so doing,
the Examiner properly shifted the burden to Appellant. Marosi, 710 F.2d at
803. As mentioned above, Appellant provides us with no evidence that
establishes a structural or otherwise unobvious difference between the
claimed and prior art components.
For these reasons, and those provided by the Examiner, we sustain
Rejection II.
DECISION
We reverse Rejection I, but affirm Rejection II.
Thus, the Examiner's final decision to reject claims 1--4, 7, 8, 12-15,
17, 18, and 22-31 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).
AFFIRMED
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