Ex Parte Ring et al

Patent Trial and Appeal Board

Mar 25, 2016

12917828 (P.T.A.B. Mar. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/917,828 11/02/2010
27820 7590 03/29/2016
WITHROW & TERRANOVA, PLLC
106 Pinedale Springs Way
Cary, NC 27511
FIRST NAMED INVENTOR
Zoltan Ring
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.
1194-028B2Al 2264
EXAMINER
NGUYEN, TRINH T
ART UNIT PAPER NUMBER
2897
NOTIFICATION DATE DELIVERY MODE
03/29/2016 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):
patents@wt-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ZOLTAN RING, SCOTT THOMAS SHEPPARD, and
HELMUT HAGLEITNER1
Appeal2014-005751
Application 12/917,828
Technology Center 2800
Before BRADLEY R. GARRIS, TERRY J. OWENS, and N. WHITNEY
WILSON, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-5, 7-11, 16, and 17. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.
Appellants claim a semiconductor device comprising a silicon carbide
substrate 20 having a first surface 28 and a polished second surface 27 that
1 Cree, Inc. is identified as the real party in interest. App. Br. 1.
Appeal2014-005751
Application 12/917,828
renders the substrate substantially transparent, and a semiconductor layer 29
on the first surface, wherein the semiconductor device defines at least one
via 37 through the silicon carbide substrate and the semiconductor layer
(sole independent claim 1, Figs. 1, 9).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A semiconductor device comprising:
a silicon carbide substrate having a first surface and a
polished second surface that is opposite the first surface,
wherein the polished second surface renders the silicon
carbide substrate substantially transparent; and
a semiconductor layer on said first surface of said
silicon carbide substrate, wherein the semiconductor device
defines at least one via through said silicon carbide substrate
and said semiconductor layer.
The Examiner rejects all appealed claims under the judicially created
doctrine of obviousness-type double patenting as unpatentable over claims
1-17 of US Patent No. 6,515,303 and over claims 1-13 of US Patent No.
6,946,739 (Final Action 4).
We summarily sustain this rejection because it has not been contested
in the record of this appeal (see App. Br. 5).
The Examiner also rejects all appealed claims under 35 U.S.C.
§ 103(a) as unpatentable over Hill (US 5,710,068, issued Jan. 20, 1998) in
view of Yamamoto (US 5,994,205, issued Nov. 30, 1999) (Final Action 4--
8).2
2 All appealed claims except dependent claims 9-11 are included in the
statement of this rejection (id. at 4). However, these dependent claims are
2
Appeal2014-005751
Application 12/917,828
The Examiner finds that Hill discloses a semiconductor device
comprising a silicon carbide substrate, a semiconductor layer, and at least
one via as required by claim 1 but not a polished second surface rendering
the silicon carbide substrate substantially transparent as claimed (id. at 4--5).
In this latter regard, the Examiner also finds that Yamamoto discloses a
semiconductor device comprising a silicon carbide substrate that has a
polished second surface and that is substantially transparent (id. at 5). Based
on these findings, the Examiner concludes that it would have been obvious
to provide the silicon carbide substrate of Hill with the features of a polished
second surface and substantial transparency in order to improve performance
as taught by Yamamoto (id. at 6).
Appellants do not contest the Examiner's finding regarding Hill (see
App. Br. 5-7) but disagree with the Examiner's finding that Yamamoto
discloses a silicon carbide substrate that is substantially transparent and has a
polished second surface (id. at 5-6). While acknowledging the Examiner's
citation of Yamamoto' s disclosures at column 2, lines 19-22, and column
11, lines 26-28 (see Ans. 7), Appellants argue without embellishment "the
cited portions of Yamamoto do not disclose that the transparent substrate is a
polished substrate" (Reply Br. 4). 3
discussed in the body of the rejection (id. at 7). It is apparent, therefore, that
the Examiner's § 103 rejection is applied against all claims as recognized by
Appellants (App. Br. 5).
3 Appellants do not present separate arguments specifically directed to the
dependent claims under rejection (App. Br. 5-7). As a consequence, the
dependent claims will stand or fall with their parent independent claim 1.
3
Appeal2014-005751
Application 12/917,828
Appellants' unembellished argument is not persuasive. The cited
disclosures of Yamamoto expressly teach "flatly polishing a substrate of ...
SiC, etc., thus enhancing a device performance" (col. 2, 11. 20-22 (see also
col. 4, 11. 7-16, col. 11, 11. 40-45)) and "by viewing the bottom-surface
scribe lines through the transparent substrate, the top-surface scribe lines and
bottom-surface scribe lines can be easily aligned" (col. 11, 11. 25-28). We
emphasize that Appellants do not explain why these express teachings do not
disclose, or would not have suggested, a transparent SiC substrate having a
polished bottom (i.e., second) surface.4 Therefore, based on the record
before us, we agree with the Examiner that Yamamoto would have
suggested providing Hill's SiC substrate with a polished second surface
rendering the substrate substantially transparent in order to obtain the
benefits taught by Yamamoto (e.g., easily aligned scribe lines5 and enhanced
performance).
For the above-stated reasons, we also sustain the§ 103 rejection of all
appealed claims.
The decision of the Examiner is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
4 We further emphasize that Yamamoto' s disclosure of a transparent
substrate relates to the first and second embodiments (col. 11, 1. 18) which
are described as having a polished bottom surface (col. 5, 1. 14, 11. 56-57
(first embodiment) and col. 7, 1. 42, col. 8, ll.3--4 (second embodiment)).
5 Hill discloses the use of scribe lines (see, e.g., col. 5, 1. 14, col. 6, 1. 11 ).
4
Appeal2014-005751
Application 12/917,828
AFFIRMED
5