Ex parte an

Board of Patent Appeals and Interferences

Aug 16, 2000

08495039 (B.P.A.I. Aug. 16, 2000)

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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 38
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JIN H. AN
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Appeal No. 1997-3479
Application 08/495,039
________________
ON BRIEF
________________
Before JERRY SMITH, HECKER and LALL, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 21 and 23-25, which
constitute all the claims remaining in the application.
The invention pertains to the field of X-shaped read-
only memory (ROM) semiconductor memory devices. More
Appeal No. 1997-3479
Application 08/495,039
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particularly, the invention is directed to an improved
arrangement of selectable ground lines and the materials for
forming these selectable ground lines.
Representative claim 21 is reproduced as follows:
21. In an X-shaped ROM semiconductor memory device of
the type including:
a plurality of elongated polysilicon word lines arranged
in vertically spaced rows,
a plurality of horizontally spaced cell transistors
electrically connected to the polysilicon word lines,
a plurality of elongated metal bit lines and elongated
selectable ground lines alternately arranged in horizontally
spaced columns between the cell transistors,
contact regions for connecting adjacent cell transistors,
and a ground terminal;
the improvement characterized by said selectable ground
lines including:
groups of adjacent odd and even polysilicon selectable
ground lines,
a first and a second metal selectable ground line on
opposite sides of each group of polysilicon selectable ground
lines,
a first polysilicon interconnect line for interconnecting
the odd polysilicon selectable ground lines of each group of
polysilicon selectable ground lines to the first metal
selectable ground line,
a second polysilicon interconnect line for
interconnecting the even polysilicon selectable ground lines
Appeal No. 1997-3479
Application 08/495,039
This rejection was identified as a new ground of1
rejection in the examiner’s answer.
For purposes of this decision, we will refer to the2
interview summary record filed by appellant on July 14, 1997
as the reply brief.
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of each group of polysilicon selectable ground lines to the
second metal selectable ground line, and
first and second driving transistors for connecting the
first and second metal selectable ground lines, respectively,
to the ground terminal.
The examiner relies on the following references:
Bertin et al. (Bertin) 4,603,341 July 29,
1986
The admitted prior art disclosed in appellant’s application.
Claims 21 and 23-25 stand rejected under 35 U.S.C. §
112, first and second paragraphs, as being based on an
inadequate disclosure and/or for failing to particularly point
out and distinctly claim the invention. Claims 21 and 23-25
also stand rejected under 35 U.S.C. § 103 . As evidence of1
obviousness the examiner offers Bertin in view of the admitted
prior art.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for2
the respective details thereof.
Appeal No. 1997-3479
Application 08/495,039
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OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner, the arguments
in support of the rejections and the evidence of obviousness
relied upon by the examiner as support for the obviousness
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the disclosure in this application describes
the claimed invention in a manner which complies with the
requirements of 35 U.S.C. § 112. We are also of the view that
the claims particularly point out the invention in a manner
which also complies with 35 U.S.C. § 112. We are further of
the view that the collective evidence relied upon and the
level of skill in the particular art would not have suggested
to one of ordinary skill in the art the obviousness of the
invention as set forth in claims 21 and 23-25. Accordingly,
we reverse.
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Application 08/495,039
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We consider first the rejection of claims 21 and 23-25
under 35 U.S.C. § 112. Although the rejection is nominally
stated to be under both the first and second paragraphs of
Section 112, it appears that the rejection is primarily
directed to a question of enablement. The rejection is simply
stated in two paragraphs on page 4 of the answer. The first
paragraph is nothing more than a bare conclusion that the
claims do not
satisfy the requirements of 35 U.S.C. § 112 with no
explanation of any kind. The second paragraph states
Further, the present invention is
supposed to be a ROM “layout”, with
some special arrangement of select
lines, but the only “layout” figure
that is supposed to represent the
present invention, Figure 4, is
identical to the prior art Figure 2,
and shows no differences. The
isolated “circuit diagrams” simply do
not serve to disclose the present
invention in a manner that can be
understood.
Although these two paragraphs do not establish much of a
rationale for the rejection, it appears to us that the
examiner’s rejection is based upon the enablement requirements
of 35 U.S.C.
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§ 112. Appellant responds that the claimed invention is
clearly supported by the disclosure and that the application
as a whole would enable the artisan to make and use the
claimed invention [brief, pages 4-11].
We agree with the position argued by appellant. The
record in this application suggests that the original examiner
had no understanding of the invention being disclosed and
claimed. This can be seen by the examiner’s reference to
Figures 2 and 4 of the application. These figures do not
reveal the “invention.” The invention as set forth in the
appealed claims is best represented by Figure 5 and the
corresponding disclosure related to Figure 5. This figure and
the disclosure show the invention to be in a specific
arrangement of the selectable ground lines and in the
materials making up the selectable ground lines. The
examiner’s assertion that the invention is the physical ROM
layout of Figure 4 is contrary to the claims which recite a
memory device having components arranged as shown in Figure 5.
The examiner’s rejection not only demonstrates a
complete lack of understanding of the invention, but it also
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Application 08/495,039
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fails to establish a prima facie case of unpatentability of
the claimed invention under either the first or second
paragraph of 35 U.S.C.
§ 112. Since we readily find the disclosure of this
application and claims 21 and 23-25 to be in compliance with
Section 112, we do not sustain this rejection of the claims.
We now consider the rejection of claims 21 and 23-25
under 35 U.S.C. § 103. In rejecting claims under 35 U.S.C.
§ 103, it is incumbent upon the examiner to establish a
factual basis to support the legal conclusion of obviousness.
See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed.
Cir. 1988). In so doing, the examiner is expected to make the
factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
Appeal No. 1997-3479
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as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657,
664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221
USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis
of the evidence as a whole and the relative persuasiveness of
the arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Only those arguments actually made by appellant have been
considered in this decision. Arguments which appellant could
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Application 08/495,039
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have made but chose not to make in the brief have not been
considered [see 37 CFR § 1.192(a)].
This rejection is set forth on pages 5-6 of the
answer. In the rejection the examiner identifies how Bertin
and the admitted prior art teach portions of the claimed
invention. The claims are drafted in Jepson form. It is
noteworthy that the rejection only identifies that the
portions of the claims before the “improvement” are taught or
suggested by Bertin and the admitted prior art. The rejection
makes no effort to address the specific limitations of the
claimed invention which form the improvement. To no one’s
surprise, appellant argues that the limitations of the claims
appearing after the improvement are neither taught nor
suggested by Bertin and the admitted prior art [reply brief].
We again agree with appellant. Since the examiner has
ignored the key features of the claimed invention in making
this rejection, the examiner has failed to establish a prima
facie case of obviousness. Therefore, we do not sustain this
rejection of the appealed claims.
In summary, we have not sustained either of the
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Application 08/495,039
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examiner’s rejections of the appealed claims. Therefore, the
decision of the examiner rejecting claims 21 and 23-25 is
reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
STUART N. HECKER ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
JS/ki
Appeal No. 1997-3479
Application 08/495,039
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Walter C. Linder
Faegre & Benson
2200 Norwest Center
90 South Seventh Street
Minneapolis, MN 55402-3901