Ex parte Prengle et al.

Board of Patent Appeals and Interferences

Jul 21, 1998

08165553 (B.P.A.I. Jul. 21, 1998)

Application for patent filed December 10, 1993. 1
According to appellants, the application is a continuation of
Application 07/895,535, filed June 8, 1992; which is a
division of Application 07/785,174, filed October 29, 1991,
now Patent No. 5,171,702; which is a continuation of
Application 07/383,960, filed July 21, 1989, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte SCOTT H. PRENGLE and
ROBERT H. EKLUND
__________
Appeal No. 95-4174
Application 08/165,5531
__________
ON BRIEF
__________
Before THOMAS, HAIRSTON, and KRASS, Administrative Patent
Judges.
Appeal No. 95-4174
Application 08/165,553
2
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 14 through 21. Claims 1 through 13 have been canceled.
The invention pertains to a BiCMOS structure having a
thick dielectric layer to reduce emitter-base capacitance in
bipolar transistors.
Independent claim 14 is reproduced as follows:
14. A single polysilicon layer BiCMOS structure at a
semiconductor surface of a body, comprising:
a bipolar transistor, comprising:
a collector region of a first conductivity type and
having a first impurity concentration;
an intrinsic base region of a second conductivity
type disposed at said semiconductor surface and within said
collector region;
an emitter region of said first conductivity type
disposed at said semiconductor surface and within said
intrinsic base region;
a thick dielectric layer, directly adjacent said
intrinsic base region and having a contact therethrough to
said emitter region; and
an emitter electrode, disposed over said thick
dielectric layer such that said thick dielectric layer
separates said emitter electrode from said intrinsic base
Appeal No. 95-4174
Application 08/165,553
3
region, wherein said emitter electrode is in contact with said
emitter region through said contact;
an insulated-gate field effect transistor, comprising:
a well region of said first conductivity type and
having said first impurity concentration;
a gate dielectric comprising thermal silicon dioxide
of a thickness substantially thinner than a thickness of said
thick dielectric layer of said bipolar transistor, disposed
over a portion of said well region;
a gate electrode disposed over said well region and
insulated therefrom by said gate electric [sic, dielectric];
and
source drain regions of said second conductivity
type and having a second impurity concentration disposed at
said semiconductor surface on both lateral sides of said gate
electrode and within said well region; and
an isolation structure disposed at said
semiconductor surface between said bipolar transistor and said
insulated-gate field effect transistor.
The examiner relies on the following references:
Homma et al. (Homma) 4,735,916 Apr. 5, 1988
Schaber et al. (Schaber) 4,737,472 Apr. 12,
1988
Maeda et al. (Maeda) 4,931,407 Jun. 5, 1990
Soejima 4,957,874 Sep. 18, 1990
Uchida et al. (Uchida) 5,214,302 May 25, 1993
Appeal No. 95-4174
Application 08/165,553
4
Claims 14 through 21 stand rejected under 35 U.S.C. §
112, second paragraph, as failing to particularly point out
and distinctly claim the invention. Claims 14 and 21 stand
rejected under 35 U.S.C. § 102(e) as alternatively anticipated
by either Soejima or Maeda. Claims 14 and 21 also stand
rejected under 35 U.S.C. § 102(b) as anticipated by Homma.
Claims 14 through 19 also stand rejected under 35 U.S.C.
102(b) as anticipated by Schaber. Finally, claims 14 through
21 stand rejected under
35 U.S.C. § 103 as unpatentable over Uchida and Homma.
Reference is made to the brief and answer for the
respective positions of appellants and the examiner.
OPINION
Turning first to the rejection of claims 14 through 21
under 35 U.S.C. § 112, second paragraph, we will not sustain
this rejection.
The examiner takes the position that the phrase “a
single-polysilicon layer BiCMOS structure at a semiconductor
surface of a body” is misdescriptive because there are two
Appeal No. 95-4174
Application 08/165,553
5
polysilicon layers, 68 and 72, formed at two different
manufacturing steps, as disclosed by the specification.
The examiner appears to be concerned with the process of
making the BiCMOS structure while the claim is directed to a
final structure of the BiCMOS shown in Figures 1 and 5. No
matter how many manufacturing steps there are in the process,
the final structure to which the claimed invention is directed
is a “single-polysilicon layer BiCMOS.” As appellants point
out [brief-page 5], this is a term of art well known in the
art of semiconductor devices, i.e., a BiCMOS device having
only one distinct polysilicon layer. The single polysilicon
layer in the finished structure is shown at 72 in Figure 1,
for example. The polysilicon layer 68, referred to by the
examiner, is no longer a separate entity in the final
structure, having been merged with polysilicon layer 72 during
the manufacturing process [see page 20, lines 23-26 of the
specification]. The examiner has not convinced us that there
is anything unclear or indefinite about the claimed “single-
polysilicon layer BiCMOS structure.”
We now turn to the rejections of claims 14 and 21 under
Appeal No. 95-4174
Application 08/165,553
6
35 U.S.C. § 102(b) as anticipated by Homma, of claims 14
through 19 under 35 U.S.C. § 102(b) as anticipated by Schaber,
and of claims 14 and 21 under 35 U.S.C. § 102(e) as
anticipated by Soejima. We will not sustain these rejections
because, as appellants point out, Homma, Schaber and Soejima
are not directed to a “single polysilicon layer BiCMOS
structure,” as claimed. The examiner does not deny this but
prefers to ignore this limitation because it appears in the
preamble and the “preamble is denied the effect of a
limitation where the claim is drawn to a structure and the
portion of the claim following the preamble is a self-
contained description of the structure not depending for
completeness upon the introductory clause,” citing Kropa v.
Robie, 187 F.2d 150, 88 USPQ 478 (CCPA 1951). [answer-page
14].
We disagree with the examiner. The recitation in the
preamble of “A single polysilicon layer BiCMOS structure”
gives “life and meaning” to the body of the claim because it
sets forth the parameters in which the rest of the structure
Appeal No. 95-4174
Application 08/165,553
7
must exist, i.e., the structure recited must not be in a
double-polysilicon layer device.
Since neither Homma nor Schaber nor Soejima teaches or
suggests each and every element of the claimed invention, we
will not sustain the rejection of claims 14 through 21 under
35 U.S.C. § 102(b) based on Homma (claims 14 and 21) or
Schaber (claims 14 through 19) or the rejection of claims 14
and 21 under 35 U.S.C. § 102(e) based on Soejima.
Turning to the rejection of claims 14 and 21 under 35
U.S.C. § 102(e) over Maeda, we will sustain this rejection.
The examiner details the rejection and how the claimed
elements are met by Maeda at page 8 of the answer. Appellants
agree that Maeda does, indeed, teach a single polysilicon
layer BiCMOS structure [pages 9-10 of the brief]. Appellants
argue only that, in Maeda, the dielectric layer and the gate
dielectric are the same and so there is no teaching in Maeda
that the dielectric layer between the emitter electrode and
the intrinsic base region is different, in thickness, from the
gate dielectric layer.
Appeal No. 95-4174
Application 08/165,553
8
The examiner points out, however, that in Figures 1H and
1I of Maeda, the “thick dielectric layer” 35 is indicated to
be 2000 angstroms thick [column 4, line 54] while gate
dielectric 23 is indicated to be about 150 angstroms thick
[column 4, lines 7 et seq.], which is “substantially thinner”
than the thickness of the thick dielectric layer. The
examiner’s position appears to be reasonable to us and
appellants have never refuted the examiner’s identification of
element 23 in Maeda as the claimed “gate dielectric” and of
element 35 in Maeda as the claimed “thick dielectric layer,”
nor have appellants submitted a reply brief refuting the
examiner’s response that Maeda’s gate dielectric 23 is of a
thickness (150 angstroms) “substantially thinner than the
thickness of said thick dielectric layer” 35 (2000 angstroms).
Accordingly, in our view, the examiner has established a
prima facie case of anticipation which has not been
successfully rebutted by appellants. Consequently, we will
sustain the rejection of claims 14 and 21 under 35 U.S.C. §
102(e) as anticipated by Maeda.
Appeal No. 95-4174
Application 08/165,553
9
We turn, finally, to the rejection of claims 14 through
21 under 35 U.S.C. § 103 as unpatentable over Uchida in view
of Homma. We will not sustain this rejection for the reasons,
supra, with regard to the rejections relying on Homma, Schaber
and Soejima. That is, neither Uchida nor Homma is directed to
a single polysilicon layer BiCMOS structure and the examiner
does not deny this. The examiner merely wants to ignore this
limitation because it appears in the preamble. As indicated
supra, it is our view that this recitation breaths life and
meaning into the claim and is a specific claim limitation
which cannot be ignored. Accordingly, since neither Uchida
nor Homma teaches or suggests this limitation, the claimed
subject matter cannot be considered obvious, within the
meaning of 35 U.S.C. § 103.
We have not sustained the rejections of claims 14 through
21 under either 35 U.S.C. § 112, second paragraph, or 35
U.S.C. § 103. We have also not sustained the rejection of
claims 14 and 21 under 35 U.S.C. § 102 over either Homma or
Soejima. Nor have we sustained the rejection of claims 14
through 19 under 35 U.S.C. § 102(b) over Schaber. We
Appeal No. 95-4174
Application 08/165,553
10
have, however, sustained the rejection of claims 14 and 21
under 35 U.S.C. § 102(e) as anticipated by Maeda.
Accordingly, the examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ERROL A. KRASS )
Administrative Patent Judge )
Jacqueline J. Garner
Texas Instruments Incorporated
Patent Department, M/S 219
P.O. Box 655474
Dallas, TX 75265