Infineon Technologies AG

Patent Trials and Appeals Board

Sep 8, 2020

15189067 - (D) (P.T.A.B. Sep. 8, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
15/189,067 06/22/2016 Nico Caspary 1012-1603/2014P50981
US01
1037
57579 7590 09/08/2020
MURPHY, BILAK & HOMILLER/INFINEON TECHNOLOGIES
1255 CRESCENT GREEN
SUITE 200
CARY, NC 27518
EXAMINER
GRAYBILL, DAVID E
ART UNIT PAPER NUMBER
2894
NOTIFICATION DATE DELIVERY MODE
09/08/2020 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 NICO CASPARY and HANS-JOACHIM SCHULZE

Appeal 2019-006692
Application 15/189,067
Technology Center 2800

Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
LILAN REN, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–6, 8–12, and 20.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Infineon Technologies AG as the real party in
interest (Appeal Br. 2).
Appeal 2019-006692
Application 15/189,067

2
CLAIMED SUBJECT MATTER
The claims are directed to METHOD OF MANUFACTURING A
SILICON WAFER. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
A method of manufacturing a silicon wafer, the method
comprising:

extracting an n-type silicon ingot over an extraction time
period from a silicon melt comprising n-type dopants;

adding p-type dopants to the silicon melt over at least part of
the extraction time period in a controlled manner, so
as to compensate an n-type doping in then-type silicon
ingot by 20% to 80% with p-type doping, and so that
an electrically active net doping concentration in then-
type silicon ingot varies by less than 60% from an
average value for at least 40% of an axial length of the
n-type silicon ingot, the electrically active net doping
concentration being based on a difference between
doping concentrations of donors and acceptors in then-
type silicon ingot; and

slicing the silicon ingot.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Harada US 2011/0263126 A1 Oct. 27, 2011
Seipel US 2014/0069324 A1 Mar. 13, 2014

Appeal 2019-006692
Application 15/189,067

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REJECTIONS
The claims stand rejected as follows: claims 1–6, 8–12, and 20 under
35 U.S.C. § 112(b) as being indefinite for failing to particularly point out
and distinctly claim the subject matter which the inventors regard as the
invention; claim 11 under 35 U.S.C. § 112(a) as failing to comply with the
enablement requirement; and claims 1–6, 8–12, and 20 under
35 U.S.C. § 103 over Seipel in view of Harada.
OPINION
Rejection under 35 U.S.C. § 112(b)
“[T]he indefiniteness inquiry asks whether the claims ‘circumscribe a
particular area with a reasonable degree of precision and particularity.’”
Marley Mouldings Ltd. v. Mikron Industries Inc., 417 F.3d 1356, 1359 (Fed.
Cir. 2005) (quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971)).
The Examiner concludes that “electrically active net doping
concentration” in claim 1 is indefinite because “there is no art recognized
definition of the language, the claim language is not otherwise explicitly
defined in the disclosure, and the plain meaning of the claim language
is otherwise indeterminable” (Ans. 6), and “‘being based on a difference
between doping concentrations of donors and acceptors in the n-type silicon
ingot’ is not definitional - it merely describes a vague relationship,
specifically, ‘being based on’” (Id.).
As indicated by claim 1, the electrically active net doping
concentration is the difference between the doping concentrations of
electrically active donors (n-type dopants) and electrically active acceptors
(p-type dopants) in the n-type silicon ingot. Hence, “electrically active net
doping concentration” is not indefinite.
Appeal 2019-006692
Application 15/189,067

4
The Examiner concludes that “retrograde” in claim 11 is indefinite
because “the relative term(s) of degree is/are not defined by the claim(s), and
the specification does not provide a standard for ascertaining the requisite
degree, hence, the claim(s) fail(s) to inform, with reasonable certainty, those
skilled in the art about the scope of the invention” (Ans. 10).
As with any ground of rejection, the Examiner bears the initial burden
of establishing a prima facie case of unpatentability. See In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). The Examiner does not provide a
substantive explanation as to why the claim term “retrograde” would have
been unclear to one of ordinary skill in the art in view of the Appellant’s
Specification. The Examiner’s mere assertions that the Specification does
not provide a standard for ascertaining the requisite degree and that the
claim fails to inform, with reasonable certainty, those skilled in the art about
the scope of the invention do not provide prima facie evidence of
indefiniteness.
Rejection under 35 U.S.C. § 112(a)
A specification complies with the 35 U.S.C. § 112(a) enablement
requirement if it allows those of ordinary skill in the art to make and use the
claimed invention without undue experimentation. See In re Wright, 999
F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du Pont De
Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984).
The Examiner finds that
because there is no direction provided by the inventor showing how to
make or use the claimed invention, including working examples, and,
in view of the related specification objections and the 112, first and
second paragraph rejections of claim(s) 1 and 11, one skilled in the art
would be unable to make and use the entire scope of the claimed
invention, at least without undue experimentation. [Final Rej. 7]
Appeal 2019-006692
Application 15/189,067

5

The Examiner does not address the Appellant’s Specification and
explain why, in view thereof, one of ordinary skill in the art would have
been unable without undue experimentation to apply a thermal budget to a
boron doped crucible by heating that is configured to set to a retrograde
profile of boron in the crucible. The Examiner, therefore, has not established
a prima facie case of nonenablement of the method claimed in the
Appellant’s claim 11.
Rejection under 35 U.S.C. § 103
We need address only the sole independent claim, i.e., claim 1.
Seipel discloses “a crucible for producing a silicon block, the crucible
comprising a crucible wall surrounding an interior, and an opening for filling
silicon into the interior, wherein the crucible wall comprises at least one
doping means for providing a dopant for the silicon within the crucible.”
[¶ 5]
Harada (¶ 47) is relied upon by the Examiner for a disclosure of
slicing a silicon ingot (Final Rej. 25).
The Examiner parrots the language of claim 1, and without citing to
any disclosure in Seipel asserts that any limitations in claim 1 that are not
disclosed by Seipel are inherent, obvious design choice, optimization of
parameters and range limitations, or result effective variables (Final Rej. 9,
13, 14, 16, 19–22).
The Examiner has the initial burden of establishing a prima facie case
of obviousness. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984); In
re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976). Meeting that burden
requires establishing that the applied prior art would have provided one of
Appeal 2019-006692
Application 15/189,067

6
ordinary skill in the art with an apparent reason to modify the prior art to
arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007). The Examiner’s mere assertions do not provide that
apparent reason.
DECISION
The Examiner’s rejections are reversed.

CONCLUSION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8–
12, 20
112(b) Indefiniteness 1–6, 8–
12, 20
11 112(a) Nonenablement 11
1–6, 8–
12, 20
103 Seipel, Harada 1–6, 8–
12, 20
Overall
Outcome
1–6, 8–
12, 20

REVERSED