Semiconductor Energy Laboratory Co., Ltd.

Patent Trials and Appeals Board

Jun 30, 2020

14016264 - (D) (P.T.A.B. Jun. 30, 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.
14/016,264 09/03/2013 Jun KOYAMA 0756-10238 1823
31780 7590 06/30/2020
Robinson Intellectual Property Law Office, P.C.
3975 Fair Ridge Drive
Suite 20 North
Fairfax, VA 22033
EXAMINER
DICKE, CHAD M
ART UNIT PAPER NUMBER
2693
NOTIFICATION DATE DELIVERY MODE
06/30/2020 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):
ptomail@riplo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUN KOYAMA and SHUNPEI YAMAZAKI
Appeal 2019-003568
Application 14/016,264
Technology Center 2600
Before JAMES R. HUGHES, LINZY T. McCARTNEY, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s Final decision to reject claims 21 and 27–37.1 See Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b). An Oral hearing was held on
June 11, 2020.
We reverse.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Semiconductor Energy Laboratory Co., Ltd., as
the real party in interest. Appeal Br. 3.
Appeal 2019-003568
Application 14/016,264

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CLAIMED SUBJECT MATTER
The claims are directed to a liquid crystal display device, a method for
driving the same, and an electronic device including the same. Spec. ¶ 1.
Claim 21, reproduced below, is illustrative of the claimed subject matter:
21. A display device comprising:
a plurality of pixels each comprising a transistor
comprising an oxide semiconductor in a channel formation
region,
wherein the oxide semiconductor comprises In, Ga and
Zn,
wherein the display device is configured to display a still
image with a refresh rate less than 60Hz, and
wherein an off-current of the transistor is less than or
equal to 1x10-12A when voltage between a drain and a source of
the transistor is 10V.
REJECTION
Claims 21, 27, 30, 31, 34, and 35 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Kimura (US 2006/0267889
A1, published Nov. 30, 2006), Itoh et al. (US 5,844,535, issued Dec. 1,
1998) (“Itoh”), and Nishimura et al. (US 5,514,880, issued May 7, 1996)
(“Nishimura”). Final Act. 4–9.
Claims 28, 32, and 36 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kimura, Itoh, Nishimura, and Darius
et al. (US 2002/0084444 A1, published July 4, 2002) (“Darius”). Final Act.
9–10.
Claims 29, 33, and 37 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kimura, Itoh, Nishimura, and Aiba et
Appeal 2019-003568
Application 14/016,264

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al. (US 2009/0272970 A1, published Nov. 5, 2009) (“Aiba”). Final Act. 10–
11.
ANALYSIS
Appellant’s Specification describes that, by drastically removing
hydrogen contained in an oxide semiconductor in a thin film transistor which
includes a highly purified oxide semiconductor in a channel formation
region, the amount of off-state current can be significantly reduced. Spec.
¶ 65. The Specification also describes that a thin film transistor including
low-temperature polysilicon is designed on the assumption that off-state
current is about 10,000 times as high as that of a thin film transistor
including an oxide semiconductor. Id. ¶ 66.
The Examiner found that the combination of Kimuru, Itoh, and
Nishimura teaches or suggests the limitation “wherein an off-current of the
transistor is less than or equal to 1x10-12A when voltage between a drain and
a source of the transistor is 10V,” as recited in claim 21. Final Act. 4–5. The
Examiner found that “Kimura as modified by ltoh and Nishimura, discloses
using an oxide semiconductor [thin film transistor] at a higher source to
drain off-current at 3 volts.” Id. at 5. The Examiner found that Figure 2 of
Nishimura teaches off-currents that progressively increase as voltage
increases. Ans. 4. The Examiner further found that the data depicted in
Nishimura Figure 2 “could ultimately be extrapolated to still be less than the
claimed 1x10-12 at 10 volts.” Id.
The Examiner concluded that it would have been obvious to an artisan
of ordinary skill to provide a thin film transistor with lower off-current, as
Nishimura teaches the desirability of small off-current. Id. In so concluding,
the Examiner relied on the holding in In re Aller, 220 F.2d 454 (CCPA
Appeal 2019-003568
Application 14/016,264

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1955), which, according to the Examiner, held that “where the general
conditions of a claim are disclosed in the prior art, discovering the optimum
or workable ranges involves only routine skill in the art.” Final Act. 5.
Appellant argues there is insufficient rationale for predictably
combining the isolated disclosures of Kimura’s oxide semiconductor
material, ltoh’s alleged still image refresh rate, and Nishimura’s different
off-current to predictably achieve an operable device with specified “off-
current” as recited in claim 21. Appeal Br. 13. Nishimura discloses a
transistor using poly-silicon. Id. at 15; Nishimura col. 17:58–59. Appellant
contends the Examiner erred in choosing an alleged property of the silicon
transistor in Nishimura, which is “an entirely different material both
chemically and electrically,” and applying it to Kimura’s oxide
semiconductor transistor without adequate evidence in support of the
predictability of such a combination. Appeal Br. 13–14.
Appellant also argues that Nishimura teaches a certain off-state
current that is not within the claimed range. Id. Specifically, Appellant
points to Nishimura’s teaching of a “minus” (negative) current between the
source and drain regions to attain a value of “-15 fA” or less per channel
width of 1 μm if a voltage of “-3V” is applied across source and drain and a
voltage of “0V” is applied to the gate, which differs from the requirements
of claim 21. Appeal Br. 15; Nishimura col. 9:28–38.
According to Appellant, one of ordinary skill in the art
would readily understand that off-state current is a
characteristic that would be changed not only dependent on its
specific material, but also its manufacture, and there is no
guidance as to how the non-overlapping range of off-current in
Nishimura’s different material could somehow be relevant to
the entirely different material of Kimura and further
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Application 14/016,264

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manipulated down to the extremely low range of off-state
current claimed.
Appeal Br. 14.
Appellant’s arguments persuade us of error. The Examiner found that
claim 21 recites the “structure” of an oxide semiconductor taught by
Kimura, and Nishimura teaches the desirability of reducing off-current
consumption, teaching a different value at a different voltage in a different
material. See Ans. 4. We do not see, however, where the prior art teaches
how to achieve optimal or working ranges to meet the claimed “off-current.”
The Examiner stated that the claimed range of the property “off-current”
would be routine in the art, but has not provided evidence in support of that
conclusion. Here, the Examiner’s proffered combination of references is not
merely “the predictable use of prior art elements according to their
established functions,” consistent with common sense. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).
As set forth in In re Aller, relied on by the Examiner, the general rule
is that discovery of an optimum value of a variable in a known process is
normally obvious. In re Aller, 220 F.2d at 456 (“Where the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.”).
One exception to this rule is that the discovery of the optimum or workable
range of a variable will not be deemed to have been obvious unless the
variable was known to be “result-effective.” See In re Antonie, 559 F.2d
618, 620 (CCPA 1977). Here, the Examiner provided no findings as to how
Nishimura indicates that a particular parameter proposed to be optimized is a
result-effective variable. See Ans. 4.
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Thus, on the record before us, we conclude that an artisan of ordinary
skill would not have reasonably combined the cited references in the manner
proffered by the Examiner without having the benefit of Appellants’ claims
and/or Specification to use as a guide.
For these reasons, we are persuaded that the Examiner erred in
concluding that claim 21 is obvious in view of Kimura, Itoh, and Nishimura.
The Examiner did not find that either Darius or Aiba teaches or suggests the
disputed limitation missing in Nishimura.
Accordingly, we reverse the Examiner’s 35 U.S.C. § 103(a) rejection
of independent claim 21, as well as the Examiner’s 35 U.S.C. § 103(a)
rejection of independent claims 30 and 34 for the same reasons. App. Br. 8,
17. Because we have reversed the rejection of each of the independent
claims, we also reverse the Examiner’s 35 U.S.C. § 103(a) rejection of
dependent claims 27–29, 31–33, and 35–37. Id.
Because we find it dispositive that the Examiner lacked “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness,” we do not address other issues raised by Appellant’s
arguments related to these claims. See Beloit Corp. v. Valmet Oy, 742 F.2d
1421, 1423 (Fed. Cir. 1984) (Finding an administrative agency is at liberty
to reach a decision based on “a single dispositive issue.”).
DECISION
We reverse the Examiner’s decision rejecting claims 21 and 27–37.
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Application 14/016,264

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DECISION SUMMARY

REVERSED

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21, 27, 30,
31, 34, 35
103(a) Kimura, Itoh,
Nishimura
21, 27, 30,
31, 34, 35
28, 32, 36 103(a) Kimura, Itoh,
Nishimura, Darius
28, 32, 36
29, 33, 37 103(a) Kimura, Itoh,
Nishimura, Aiba
29, 33, 37
Overall
Outcome:
21, 27–37