Kaoru Hatano

Patent Trials and Appeals Board

May 3, 2021

2020004006 (P.T.A.B. May. 3, 2021)

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.
13/223,475 09/01/2011 Kaoru Hatano 12732-0936001 7470
26171 7590 05/03/2021
FISH & RICHARDSON P.C. (DC)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
LI, MEIYA
ART UNIT PAPER NUMBER
2811
NOTIFICATION DATE DELIVERY MODE
05/03/2021 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAORU HATANO
Appeal 2020-004006
Application 13/223,475
Technology Center 2800
Before DONNA M. PRAISS, JULIA HEANEY, and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 7–11, 25, 26, and 28–36. We have
jurisdiction. 35 U.S.C. § 6(b).
We affirm-in-part.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as
Semiconductor Energy Laboratory Co., Ltd. Appeal Br. 1.
Appeal 2020-004006
Application 13/223,475
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CLAIMED SUBJECT MATTER
The claims are directed to semiconductor devices containing, inter
alia, a transistor and a light-emitting element. Independent claims 1, 7, 34.
Independent claims 1 and 34, reproduced below, are illustrative of the
claimed subject matter:
1. A semiconductor device, comprising:
a first substrate;
a transistor over the first substrate;
a light-emitting element over the first substrate, the light-
emitting element including:
a first electrode electrically connected to a source
electrode or a drain electrode of the transistor;
a second electrode overlapping with the first electrode;
and
an organic layer containing a light-emitting substance
between the first electrode and the second electrode;
a sealant surrounding the transistor and the light-emitting
element;
a second substrate facing the first substrate and fixed to the
first substrate with the sealant; and
an adsorption layer between the first substrate and the
second substrate,
wherein the adsorption layer is configured to adsorb a
hydrogen molecule,
wherein a channel formation region of the transistor
includes an oxide semiconductor including indium, gallium, and
zinc, and
wherein the adsorption layer overlaps with the transistor
and the light-emitting element.
34. A semiconductor device, comprising:
a transistor; and
a light-emitting element electrically connected to the
transistor, the light-emitting element comprising an
electroluminescent layer,
wherein a through hole of an electrode of the light-
emitting element overlaps with a channel formation region of the
transistor.
Appeal 2020-004006
Application 13/223,475
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REJECTIONS
I. Claims 34 and 36 under 35 U.S.C. § 102(b) as unpatentable
over Yamazaki ʼ2472;
II. Claims 1, 2, 5, 28, and 32 under 35 U.S.C. § 103(a) as
unpatentable over Yamazaki ʼ1073 in view of Sato4;
III. Claims 3 and 29 under 35 U.S.C. § 103(a) as unpatentable over
Yamazaki ʼ107 in view of Sato and Giannantonio5;
IV. Claim 4 under 35 U.S.C. § 103(a) as unpatentable over
Yamazaki ʼ107 in view of Sato and Kawakami6;
V. Claims 7, 25, 26, 30, 33, and 35 under 35 U.S.C. § 103(a) as
unpatentable over Yamazaki ʼ247 in view of Sato;
VI. Claims 8, 9, and 31 under 35 U.S.C. § 103(a) as unpatentable
over Yamazaki ʼ247 in view of Sato and Giannantonio;
VII. Claim 10 under 35 U.S.C. § 103(a) as unpatentable over
Yamazaki ʼ247 in view of Sato and Kawakami; and
VIII. Claim 11 under 35 U.S.C. § 103(a) as unpatentable over
Yamazaki ʼ247 in view of Sato and Yamazaki ʼ107.
Final Act. 2–15.

2 US 2005/0073247 A1, published April 7, 2005.
3 US 2005/0231107 A1, published October 20, 2005.
4 US 2011/0073856 A1, published March 31, 2011.
5 US 2008/0226902 A1, published September 18, 2008.
6 US 2007/0215867 A1, published September 20, 2007.
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OPINION
We review the appealed rejection for reversible error based on the
arguments and evidence presented by Appellant. 37 C.F.R.
§ 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (explaining that even if the Examiner had failed to make a prima
facie case, “it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”).
We address the claims separately to the extent they are so argued by
Appellant. 37 C.F.R. § 41.37(c)(1)(iv).
Rejection I
Appellant argues, inter alia, that Yamazaki ʼ247 does not disclose “a
light-emitting element electrically connected to the transistor” as recited in
claim 34. Appeal Br. 5.
We begin by noting that the Examiner maps the claimed “transistor”
to Yamazaki ʼ247’s thin film transistor (TFT) 201, and the claimed “light-
emitting element” to Yamazaki ʼ247’s multiple light-emitting elements 204,
205, 206. Final Act. 2. We agree with Appellant that Yamazaki ʼ247 does
not disclose that TFT 201 is electrically connected to each of the individual
light-emitting elements 204, 205, and 206 as mapped in the rejection.
Appeal Br. 5. Rather, Yamazaki ʼ247 discloses that “the current supply to
the light-emitting element 204 is controlled by TFT 201.” Yamazaki ʼ247
¶ 46; see also id. ¶ 50 (“light-emitting element 204 has a first electrode 213
electrically connected to the [TFT] 201.”). Separate light-emitting elements
205 and 206 are electrically connected to and controlled by separate, distinct
transistors 202 and 203, respectively. Id. ¶¶ 46, 51, 52. Thus, the
Appeal 2020-004006
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Examiner’s finding that transistor 201 is “electrically connected” to light-
emitting elements 204, 205, and 206 as a collective unit is unsupported by
evidence. Final Act. 2.
The Examiner’s position in the Answer that “it is well known in the
art that all the elements in one semiconductor device are electrically
connected to each other” is also unsupported by evidence. Ans. 8. In the
absence of such evidence, we agree with Appellant (Reply Br. 4–5) that such
an interpretation of the term “electrically connected” risks rendering this
term meaningless and, thus, reading it out of the claim as presently drafted.
In re Angstadt, 537 F.2d 498, 501 (CCPA 1976) (“[W]e must give effect to
all claim limitations.”); Texas Instruments Inc. v. Int’l Trade Comm’n, 988
F.2d 1165, 1171 (Fed. Cir. 1993) (“[T]o construe the claims in the manner
suggested by TI would read an express limitation out of the claims. This, we
will not do.”).
Therefore, because the Examiner has not established with factual
evidence that Yamazaki ʼ247’s transistor 201 is “electrically connected” to
Yamazaki ʼ247’s “light-emitting element” 204/205/206 as presently mapped
in the rejection, we reverse the Examiner’s anticipation rejection of claims
34 and 36.
Rejections II–IV
The Examiner’s rejection of claims 1–5, 28, 29, and 32 as obvious
over Yamazaki ʼ107 and Sato, with or without additional prior art, is set
forth at pages 3–8 of the Final Office Action.
Appellant advances one argument against these rejections––i.e., that
Sato does not disclose the purported benefit relied upon by the Examiner to
establish a motivation for combining the teachings of Sato with those of
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Yamazaki ʼ107––i.e., “to reduce parasitic capacitance formed in a cross
region between a gate electrode and a source/drain region, improve
characteristics of the device, [and] reduce the number of manufacturing steps
and costs.” Appeal Br. 2–3.
While this argument appears to be correct,7 Appellant does not
address the Examiner’s alternative obviousness rationale that it is “within
the general skill of a worker in the art to select a known material on the basis
of its suitability for the intended use.” Final Act. 5. Sato discloses “a
technique of using an amorphous oxide semiconductor composed of In, Ga,
Zn, and O for a channel layer of TFTs has been studied,” and that “[o]xide
semiconductor TFTs are very promising as switching devices or driving
devices instead of amorphous silicon TFTs . . . for display apparatuses.”
Sato ¶¶ 7–8. Because Appellant does not address the Examiner’s alternative
obviousness rationale, Appellant does not identify error in the Examiner’s
determination that the presently claimed oxide semiconductor containing
indium, gallium, and zinc would have been a known material suitable for use
in Yamazaki ʼ107’s transistor.
We, therefore, sustain the obviousness rejections of claims 1–5, 28,
29, and 32.

7 In the rejection, the Examiner does not identify where Sato discloses this
purported benefit. Final Act. 5. When challenged on this point (Appeal Br.
2–3), the Examiner responds that “Sato clearly discloses in paragraphs
[0003]-[0016] the benefits of using oxide semiconductor composed of In,
Ga, Zn and O for a channel layer of TFTs when compared with amorphous
silicon TFTs.” Ans. 4. Appellant is correct in arguing, however, that those
paragraphs “do not explicitly tie [any noted] benefits to using indium,
gallium, and zinc.” Reply Br. 2. Rather, those benefits appear to be
germane to oxide semiconductor TFTs generally. Sato ¶ 8.
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Rejections V–VIII
The Examiner’s rejection of claims 7–11, 25, 26, 30, 31, 33, and 35 as
obvious over Yamazaki ʼ247 and Sato with or without additional prior art is
set forth at pages 8–15 of the Final Office Action.
Appellant first argues that the Examiner’s motivation to combine the
teachings of Yamazaki ʼ247 and Sato is deficient. Appeal Br. 4. We reject
that argument here as we did with respect to Rejections II–IV discussed
supra. As with the rejection of independent claim 1, the Examiner provides
multiple bases for reaching the obviousness conclusion with respect to
independent claim 7. Final Act. 11. Here again, Appellant does not provide
any argument disputing the Examiner’s determination that it would have
been obvious for the skilled artisan to select a known material on the basis of
its suitability for its intended use. Appeal Br., generally.
Appellant next argues that Yamazaki ʼ247 does not teach or suggest
the claimed “second electrode including a through hole.” Appeal Br. 4.
According to Appellant, Yamazaki ʼ247’s “electrode 213 (7010) is unitary
and without any openings/holes.” Id. Thus, Appellant appears to assert that
the Examiner’s mapping of the “second electrode” to elements 213/216/218
(7010/7011/7012)8 is erroneous.
This argument is not persuasive of reversible error in the rejection.
Appellant does not explain with any degree of specificity why the skilled
artisan would not have understood Yamazaki ʼ247’s elements 213, 216, and
218 as combined, or elements 7010, 7011, and 7012 as combined to
constitute “the second electrode” of claim 7. Rather, Appellant bases its

8 Elements 213, 216, and 218 appear in Yamazaki ʼ247’s Figure 2, while
elements 7010, 7011, and 7012 appear in Yamazaki ʼ247’s Figure 7.
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assertion on the premise that these elements are all separate individual
electrodes. This line of argument does not squarely address the rejection as
presented by the Examiner. Here, we emphasize that elements 213, 216, and
218 are separately referred to in the prior art as “the first electrode” and have
spaces therebetween. Yamazaki ʼ247 ¶¶ 50–52, Fig. 2. In view of such
disclosure, and in the absence of persuasive argument to the contrary, we
discern no reversible error in the Examiner’s treatment of elements 213, 216,
and 218 collectively as a single electrode.
Because Appellant does not identify reversible error in the rejections
of claims 7–11, 25, 26, 30, 31, and 33, we sustain the rejections of these
claims.
We do not sustain, however, the Examiner’s rejection of claim 35,
dependent from independent claim 34, for the same reasons provided with
respect to that claim supra.
CONCLUSION
Rejection I is reversed.
Rejections II–IV and VI–VIII are affirmed.
Rejection V is affirmed-in-part.

Appeal 2020-004006
Application 13/223,475
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s) / Basis Affirmed Reversed
34, 36 102(b) Yamazaki ’247 34, 36
1, 2, 5, 28,
32
103(a) Yamazaki ’107, Sato 1, 2, 5, 28,
32

3, 29 103(a) Yamazaki ’107, Sato,
Giannantonio
3, 29
4 103(a) Yamazaki ’107, Sato,
Kawakami
4
7, 25, 26,
30, 33, 35
103(a) Yamazaki ’247, Sato 7, 25, 26,
30, 33
35
8, 9, 31 103(a) Yamazaki ’247, Sato,
Giannantonio
8, 9, 31
10 103(a) Yamazaki ’247, Sato,
Kawakami
10
11 103(a) Yamazaki ’247, Sato,
Yamazaki ’107
11
Overall
Outcome
1–5, 7–11,
25, 26, 28–
33
34–36

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART