Sylvain Maitrejean et al.

Patent Trials and Appeals Board

Jul 31, 2019

14575329 - (D) (P.T.A.B. Jul. 31, 2019)

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.
14/575,329 12/18/2014 Sylvain MAITREJEAN 446247US41 7712
22850 7590 07/31/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
PARENDO, KEVIN A
ART UNIT PAPER NUMBER
2819
NOTIFICATION DATE DELIVERY MODE
07/31/2019 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SYLVAIN MAITREJEAN, SHAY REBOH, and
ROMAIN WACQUEZ
____________

Appeal 2018-008620
Application 14/575,329
Technology Center 2800
____________

Before KAREN M. HASTINGS, MONTÉ T. SQUIRE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1–4, 7–10 and 12 under 35 U.S.C.
§ 103 over at least the basic combination of Bedell et al. (US 2012/0068267
A1, published Mar. 22, 2012) (“Bedell”) and Joo et al. (US 6,187,282 B1,

1Appellant is the applicant, “COMMISSARIAT A L’ENERGIE
ATOMIQUE ET AUX ENERGIES ALTERNATIVES”, which is also stated
to be the real party in interest (Appeal Br. 3).
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issued Feb. 13, 2001) (“Joo”), Son (US 6,348,715 B1, issued Feb. 19, 2002)
(“Son”).2,3
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
Independent claim 1 is illustrative (emphasis added to highlight key
disputed limitation):

1. A method for modifying a strain state of a block of a
semiconducting material having a crystalline structure,
comprising steps in the following order:
a) forming an amorphous lower region in the block of
semiconducting material resting on a substrate, while
maintaining the crystalline structure of an upper region of the
block, which is in contact with the amorphous lower region;
b) performing at least one creep annealing of the block with a
suitable duration and temperature so that creep occurs in the
amorphous lower region and without recrystallizing the
semiconducting material of the amorphous lower region; and
c) performing at least one recrystallization annealing of the
amorphous lower region of the block.

2 The Examiner applied additional prior art to dependent claim 4 (Final
Action 13).
3 The Examiner’s rejection under 35 U.S.C. § 112 of claim 7 has been
withdrawn (Ans. 2).
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ANALYSIS
We review the appealed § 103 rejections for error based upon the
issues identified by Appellant and in light of the arguments and evidence
produced thereon. Cf. 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) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)).
After having considered the evidence presented in this Appeal and
each of Appellant’s contentions, we are not persuaded that Appellant
identifies reversible error, and we affirm the Examiner’s § 103 rejections of
claims 1, 3, 4, and 7–9 for the reasons expressed in the Final Office Action
and the Answer but reverse the Examiner’s § 103 rejection of claims 2, 10
and 12 for the reasons expressed in the Appeal and Reply Briefs.
We add the following primarily for emphasis.
First, Appellant argues that the Examiner’s interpretation of the
recited “creep annealing” step is unreasonable (Appeal Br. 22–27).
Appellant contends that Joo’s preheating step does not constitute the claimed
creep annealing, especially since Joo aims to prevent deformation of the
glass substrate (Appeal Br. 28–31). Finally, Appellant urges that the
Examiner’s reason to combine Joo with Bedell so as to result in the recited
steps is insufficient, especially since Joo teaches to prevent deformation
(Appeal Br. 32–33). Appellant reiterates these arguments in the Reply Brief.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
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Inc., 550 U.S. 398, 418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264–65 (Fed.
Cir. 1992).
These arguments are not persuasive of error in the Examiner’s
rejection. As aptly pointed out by the Examiner, Joo is relied upon to
exemplify that a pre-heating step before an annealing step for
recrystallization of amorphous silicon is known in the art of preparing a
semiconductor material, and improves recrystallization while shortening the
thermal annealing time (Final Action 6, Ans. 4, 5; Joo col. 5, ll. 8–13, col. 2
ll. 50–56). Appellant’s argument that there is no glass substrate in Bedell as
in Joo (Reply Br. 5) is not persuasive because, as Appellant recognizes,
Bedell has an insulator substrate (id; Bedell ¶ 15). One of ordinary skill in
the art would appreciate that a glass substrate is indeed an insulator.
Appellant has not provided any persuasive reasoning or credible evidence to
refute the Examiner’s determination that one of ordinary skill in the art,
using no more than ordinary creativity, would have performed a preheating
annealing step before the recrystallization annealing step of Bedell.
It is well established that “the PTO must give claims their broadest
reasonable construction consistent with the specification. . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims
to narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” Id. Notably, we do not find—and
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Appellant has not directed our attention to—any limiting definitions in the
Specification, nor does Appellant provide any persuasive reasoning or
credible evidence to establish that the Examiner’s interpretation of the
“creep annealing” language of claim 1 or claim 9 is unreasonable.
Appellant’s arguments that no creep would have occurred if one had
subjected the semiconductor material of Bedell to a preheating step as
exemplified in Joo are also unpersuasive of reversible error in the
Examiner’s rejection. As the Examiner aptly points out, Appellant has not
provided any explicit guidance in the claim or Specification as to the degree
of creep which must occur (Ans. 3). Appellant’s argument that the
Specification states that the “thermal budget” is “sufficiently high to enable
relaxation” and a stress variation “of at least 300Mpa” (Appeal Br. 26; Spec.
5:28 to Spec. 6:2) does not define over the “thermal budget” reasonably
envisioned for use in the Bedell/Joo combination. Appellant has not shown
error in the Examiner’s position that some creep would have occurred in the
Bedell/Joo combination since the same temperature and material are used in
the preheating step of the Bedell/Joo combination as in Appellant’s
Specification (Ans. 4–6).
Appellant’s argument that Joo is silent as to the preheating time
(Appeal Br. 5) is not persuasive given that Appellant’s Specification
describes that the preheating step may last, for example only, “several tens
of seconds” at a temperature of 300° to 400°C (Spec. 7:15–17). Joo uses a
temperature of “e.g., 400° C” (Joo, col. 5, ll. 8–10). Furthermore, preheating
is a well known engineering expedient for many reasons, and thus to provide
an appropriate preheating time in Bedell would have been within the level of
ordinary skill.
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It has been held that when the Examiner establishes a reasonable basis
that the products (or processes) claimed by the applicant and disclosed in the
prior art appear to be the same or substantially similar, the burden is
properly shifted to the applicant to show that they are not. See In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254–56
(CCPA 1977). Cf. In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004). See
also In Re Dillion, 919 F.2d 688 (Fed. Cir. 1990) (a prima facie case of
obviousness does not require both structural similarity and a suggestion in or
expectation from the prior art that the claimed compound will have the same
or a similar usefulness as the applicants newly discovered compound;
exactly what amounts to a prima facie case varies from case to case.)
Here, the Examiner’s determination that the resultant product from a
Bedell/Joo process appears to be the same or substantially similar to those as
claimed and disclosed is reasonable. Appellant fails to adequately show that
such a process would not have resulted in some degree of “creep
deformation.” Technical assertions unsupported by factual evidence are not
persuasive. In re Geisler, 116 F. 3d 1465, 1470 (Fed. Circ. 1997). It has
long been established that attorney’s arguments in a brief cannot take the
place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Appellant’s arguments thus do not point out reversible error in the
Examiner’s rejection of claim 1, 7, and 9, and a preponderance of the
evidence supports the Examiner’s obviousness determination.
With respect to dependent claims 2 and 10, Appellant argues that the
Examiner has not shown that the block of semiconductor material worked on
is “a strained semiconducting block” (Appeal Br. 35; Reply Br. 6). The
Examiner’s position is that the block may be strained at any time (Ans. 8).
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However, we agree with Appellant that as a matter of claim interpretation,
dependent claim 2 requires the starting material of claim 1 to be a block of
strained semiconducting material before step a) (Reply Br. 6). Thus, we
reverse the rejection of dependent claims 2 and 10. Likewise, with respect
to dependent claim 12, the Examiner has not directed us to any evidence or
reasoning that the starting block is a strained block whose strain is reduced
by at least 300 MPa (Appeal Br. 39, 40).4
However, Appellant has not shown error in the Examiner’s
determination that Bedell exemplifies the material recited in claim 3 for
reasons explained by the Examiner (Ans. 8, 9).
With respect to dependent claim 7, Appellant’s remarks are not
persuasive for reasons set out by the Examiner (Ans. 9, 10).
Appellant does not provide any specific separate arguments for any of
the remaining dependent claims, including claim 4 separately rejected; the
remarks rely on arguments already made with respect to claims 1 and 9 (see
generally Appeal Br.).
Accordingly, the Examiner’s § 103 rejections are affirmed with
respect to claims 1, 3, 4, and 7–9 on appeal, and reversed as to claims 2, 10
and 12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

4 We agree with Appellant that claim 12 requires reducing the strain in the
block of strained semiconducting material by at least 300 Mpa (Appeal Br.
40).
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ORDER
AFFIRMED-IN-PART