Soitec

Patent Trials and Appeals Board

Jul 2, 2020

2019005336 (P.T.A.B. Jul. 2, 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.
15/170,532 06/01/2016 Marcel Broekaart 3635-13234(PA98088USWN236 6313
24247 7590 07/02/2020
TRASKBRITT, P.C.
P.O. BOX 2550
SALT LAKE CITY, UT 84110
EXAMINER
SYLVIA, CHRISTINA A
ART UNIT PAPER NUMBER
2895
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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):
USPTOMail@traskbritt.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCEL BROEKAART, IONUT RADU,
and DIDIER LANDRU

Appeal 2019–005336
Application 15/170,532
Technology Center 2800
Before BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI, and JANE
E. INGLESE, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8, 11–13, and 15–18. 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 the real party in interest as Soitec. Appeal Br.
2.
Appeal 2019-005336
Application 15/170,532

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CLAIMED SUBJECT MATTER

Claim 1 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
1. A method for mechanically separating layers,
comprising the steps of:

providing a first semiconductor compound comprising a layer of a
handle substrate and an active
layer with a front main side and a back main side opposite the
front main side, wherein
the layer of the handle substrate is attached to the front main
side of the active layer; then providing a layer of a carrier substrate
onto the back main side of the active layer; and then initiating
mechanical separation of the layer of the handle substrate so as to
obtain a second
semiconductor compound comprising the layer of the carrier
substrate at the back main side of the active layer;
and further comprising, before the step of initiating mechanical
separation, a step of thinning the
layer of the handle substrate;
wherein the layer of the handle substrate and the layer of the carrier
substrate are provided with a
substantially symmetrical mechanical structure after the step of
thinning the layer of the
handle substrate.

Appeal 2019-005336
Application 15/170,532

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Fathimulla et al. US 2004/0002197 A1 Jan. 1, 2004
Kim et al. US 2014/0106649 A1 Apr. 17, 2014
Broekaart et al. US 2016/0358805 A1 Dec. 8, 2016
Bartek, M., et al. Characterization of High-Resistivity Polycrystalline
Silicon Substrates for Wafer-Level Packaging and Integration of RF
Passives, 227–230 (2004).

REJECTIONS
1. Claims 1–5 and 15–16 are rejected under 35 U.S.C. § 103 as
being unpatentable over Broekaart, Applicant own Admitted Prior Art
(hereinafter “AAPA”) in view of Kim.
2. Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable
over AAPA and Kim, as applied to claim 5 above, and further in view of
Bartek.
3. Claims 7–8, 11–13, 17, and 18 are rejected under 35
U.S.C.§ 103 as being unpatentable over AAPA and Kim, as applied to claim
4 above, and further in view of Fathimulla.

OPINION
Upon consideration of the evidence and each of the respective
positions set forth by each party, we find that the preponderance of evidence
supports Appellant’s position. We thus reverse the Examiner’s decision to
reject the appealed claims for the reasons provided by Appellant in the
record, and add the following for emphasis.
Appeal 2019-005336
Application 15/170,532

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Critical to our analysis herein is claim interpretation. Appellant
argues that the Specification expressly defines the term “substantially
symmetrical mechanical structure” in claim 1 as meaning “that, even if
the layer of temporary handle substrate and the layer of final carrier
substrate have different intrinsic mechanical properties (elasticity/rigidity,
fracture toughness, etc.) and/or different geometries (thickness, shape, etc.)
with respect to each other, they are provided such that the global mechanical
properties on either side of the active layer are substantially the same when
the mechanical separation is initiated.” Spec. ¶ 15; see also ¶¶ 16-19 of the
Specification; Appeal Br. 18–20; Reply Br. 2–4.
Appellant submits that based upon the express disclosure in these
paragraphs of the Specification, one skilled in the art would readily
understand that both the mechanical properties and the geometries of a
handle substrate and a carrier substrate must be accounted for when
determining whether a multilayer structure has a “substantially symmetrical
mechanical structure,” as recited in claim 1. Reply Br. 3.
Appellant explains that if a handle substrate and a carrier substrate
have the same thickness but substantially different Young’s Modulus, they
clearly would not have a substantially symmetrical mechanical structure, as
recited in claim 1. Reply Br. 3–4. Similarly, if a handle substrate and a
carrier substrate have the same Young’s Modulus but substantially different
thicknesses, they also clearly would not have a substantially
symmetrical mechanical structure. Reply Br. 4. Appellant explains that a
handle substrate and a carrier substrate having different thickness could be
provided with a substantially symmetrical mechanical structure by ensuring
Appeal 2019-005336
Application 15/170,532

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an appropriate difference in the magnitudes of their Young’s Modulus. Id.
Appellant explains that similarly, a handle substrate and a carrier substrate
having different Young’s Modulus could be provided with a substantially
symmetrical mechanical structure by ensuring an appropriate difference
in their thicknesses. Id. It is in this manner that “the layer of the handle
substrate and the layer of the carrier substrate are provided with a
substantially symmetrical mechanical structure after the step of thinning the
layer of the handle substrate” as claimed in claim 1.
We agree with the aforementioned claim interpretation as explained
by Appellant based upon the disclosure in the Specification as pointed out
by Appellant. We note that applicants are free to act as their own
lexicographers, but any novel definitions they choose to adopt must be
clearly indicated as such. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1582 (Fed. Cir. 1996) (“[A] patentee may choose to be his own
lexicographer . . . as long as the special definition of the term is clearly
stated in the patent specification…”). Appellant has done so in the
Specification as explained by Appellant in the record.
We thus agree with Appellant’s position that the Examiner’s claim
interpretation (Ans. 4–6) is flawed because it is overly broad. The Examiner
views the claim phrase as only requiring a structure having substantially the
same geometry or having substantially the same mechanical properties.
Ans. 5–6. However, this is inconsistent with the Specification as discussed,
supra. Spec ¶¶ 15–19. The Specification disclosure indicates that both
mechanical and geometrical properties are accounted for in achieving a
“substantially symmetrical mechanical structure” as recited in claim 1.
Although claims are given their broadest reasonable interpretation during
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examination, the interpretation must not be unreasonably broad. In re Suitco
Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (“[T]his court has
instructed that any such construction be “consistent with the specification, . .
. and that claim language should be read in light of the specification as it
would be interpreted by one of ordinary skill in the art.”); In re Smith Int’l,
Inc., 871 F.3d 1375, 1382 (Fed. Cir. 2017) (“‘[T]he protocol of giving
claims their broadest reasonable interpretation . . . does not include giving
claims a legally incorrect interpretation’ ‘divorced from the specification and
the record evidence.’”) (internal citation omitted).
Having given the aforementioned claim interpretation, we therefore
also agree with Appellant that the Examiner’s reliance upon AAPA is flawed
because, contrary to the Examiner’s position (Ans. 6), AAPA does not
provide for “wherein the layer of the handle substrate and the layer of the
carrier substrate are provided with a substantially symmetrical mechanical
structure after the step of thinning the layer of the handle substrate” within
the meaning of this claim term as discussed, supra. Appeal Br. 22–24.
As such, we reverse each rejection (the Examiner does not rely upon
the other applied references to cure the stated deficiency of AAPA). Final
Act. 5–16.
CONCLUSION
We reverse the Examiner’s decision.

Appeal 2019-005336
Application 15/170,532

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 15, 16 103 Broekaart, AAPA,
Kim
1–5, 15, 16
6 103 AAPA, Kim,
Bartek
6
7, 8, 11–13,
17, and 18
103 AAPA, Kim,
Fathimulla
7, 8, 11–13,
17, and 18
Overall
Outcome
1–8, 11–13,
and 15–18

REVERSED