Ex parte Blalock et al.

Board of Patent Appeals and Interferences

Sep 14, 2000

08628287 (B.P.A.I. Sep. 14, 2000)

The opinion in support of the decision being entered today was not written
for publication in a law journal and is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GUY BLALOCK and PHILLIP G. WALD
____________
Appeal No. 2000-0721
Reissue Application No. 08/628,287
____________
ON BRIEF
____________
Before HAIRSTON, BARRETT, and BARRY, Administrative Patent
Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the rejection of claims 1-83. We reverse.
BACKGROUND
The invention at issue in this appeal relates to stacked
capacitor cells. As dynamic random access memories increase
in memory cell density, maintaining sufficient storage
capacitance while decreasing cell area is a challenge. A
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Page 2
principal way of increasing such capacitance is through cell
structure techniques. Such techniques include three-
dimensional cell capacitors such as trenched or stacked
capacitors.
A conventional stacked "crown" cell capacitor features
upward, spire-like projections, which increase surface area
and corresponding capacitance as compared with planar
capacitors. More specifically, a semiconductor wafer
comprises a bulk substrate, word lines, a field oxide region,
and an active area for connection with a capacitor. The wafer
further comprises a layer of insulating dielectric through
which a desired contact opening is provided to the active
area. The contact opening has an elliptical or circular shape
circumscribed by sidewalls. The sidewalls are typically
smooth and straight. A layer of conductive material, such as
conductively doped polysilicon, is deposited atop the wafer
and within the contact opening. The deposited polysilicon
provides a storage node poly for formation of a capacitor
plate.

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The inventive construction provides a striated surface
for deposit of conductively doped polysilicon atop a wafer and
within a contact opening. Such a surface maximizes surface
area in both external and internal portions of the deposited
polysilicon. Increasing surface area, in turn, increases
capacitance.
Claim 53, which is representative for our purposes,
follows:
53. A stacked capacitor construction formed within a
semiconductor substrate comprising:
a layer of insulating dielectric material located on
the semiconductor substrate having at least one
contact opening therein, the contact opening
having striations in the sidewall;
an electrically conductive storage node, the storage
node having external sidewalls, the
external sidewalls each having a surface
thereon to maximize surface area and
corresponding capacitance, the surfaces of
the external side walls including striations;
a dielectric layer provided over the storage node
and
its associated external sidewalls, the
dielectric layer including striations; and
an electrically conductive layer provided over the
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Reissue Application No. 08/628,287
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dielectric layer, the surface of the
electrically conductive layer including partial
striations.
Claims 5-83 stand rejected under 35 U.S.C. § 112, ¶ 1, as
lacking a written description. Claims 1-83 stand rejected
under 35 U.S.C. § 251 as lacking an error correctable by
reissue of the original patent. Claims 5-83 stand rejected
under 35 U.S.C. § 112, ¶ 2, as indefinite. Rather than repeat
the arguments of the appellants or examiner in toto, we refer
the reader to the briefs and answer for the respective details
thereof.
OPINION
In deciding this appeal, we considered the subject matter
on appeal and the rejection advanced by the examiner.
Furthermore, we duly considered the arguments and evidence of
the appellants and examiner. After considering the totality
of the record, we are persuaded that the examiner erred in
rejecting claims 1-83. Accordingly, we reverse. Our opinion
addresses the following issues:
• written description of claims 5-83
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Reissue Application No. 08/628,287
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• error correctable by reissue
• definiteness of claims 5-83.
Written Description of Claims 5-83
We begin by noting the following principle: “‘the PTO has
the initial burden of presenting evidence or reasons why
persons skilled in the art would not recognize in the
disclosure a description of the invention defined by the
claims.’"
In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618
(Fed. Cir. 1989)(quoting In re Wertheim, 541 F.2d 257, 263,
191 USPQ 90, 97 (CCPA 1976)). With these principles in mind,
we consider the examiner's rejection and the appellants'
argument.

The examiner alleges, "[t]he only sidewalls including
'striations' disclosed in the specification appear to have
'longitudinally extending striations'.... [S]uch 'striations'
which are not 'longitudinally extending' would be new matter."
(Examiner's Answer at 4.) The appellants argue, "the stacked
capacitor construction of the invention is described
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structurally in the specification and illustrated in the
drawings as having 'striations', not merely 'longitudinally
extending striations'." (Reply Br. at 13.)
Claims 5-8, 13-16, 21-36, 53-56, and 65-83 each specifies
in pertinent part the following limitations: "surfaces of the
external sidewalls including striations ...." Similarly,
claims 9-12 each specifies in pertinent part the following
limitations: "surfaces of the rising external sidewalls
including striations ...." Further similarly, claims 17-20
each specifies in pertinent part the following limitations:
"surfaces of the external sidewalls including striated
sidewalls ...." Also similarly, claims 37-40 each specifies
in pertinent part the following limitations: "surfaces of the
upwardly rising external sidewalls including striations ...."
Similarly, claims 41-44 each specifies in pertinent part the
following limitations: "surfaces of the external sidewalls
including complementary striations ...." Further similarly,
claims 45-48 each specifies in pertinent part the following
limitations: "surfaces of the rising external sidewalls
including complementary striations ...." Also similarly,
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claims 49-52 each specifies in pertinent part the following
limitations: "surfaces of the upwardly rising external
sidewalls including complimentary striations ...." Similarly,
claims 57-64 each specifies in pertinent part the following
limitations: "surfaces of the upwardly raised external
sidewalls including striations ...." Accordingly, the
limitations of claims 5-83 require striations in the surfaces
of external sidewalls.
The examiner fails to show that the limitations lack a
written description. “To fulfill the written description
requirement, the patent specification ‘must clearly allow
persons of ordinary skill in the art to recognize that [the
inventor] invented what is claimed.’" Gentry Gallery, Inc. v.
Berkline Corp., 134 F.3d 1473, 1479, 45 USPQ2d 1498, 1503
(Fed. Cir. 1998) (quoting Gosteli, 872 F.2d at 1012, 10 USPQ2d
at 1618). Fulfillment of the requirement is adjudged “as of
the filing date” of the associated patent application. Vas-
Cath, Inc. v. Mahurkar, 935 F.2d at 1566, 19 USPQ2d at 1119.
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Here, the original specification, which includes the
original claims, discloses striations in the surfaces of
external sidewalls. Specifically, "a capacitor contact
opening ha[s] grooved striated sidewalls and thereby defining
female capacitor contact opening striations;" col. 3, ll. 10-
12, "electrically conductive material filling the grooved
striations of the capacitor contact opening thereby defining
striated external conductive material sidewalls within the
capacitor contact opening which are male complementary in
shape to the female capacitor contact opening striations;" id.
at ll. 16-21, and "exposed striated sidewalls ...." Id. at
ll. 30-31.
In view of this disclosure, we are not persuaded that
persons skilled in the art would not recognize in the
disclosure a description of the invention defined by the
claims. The examiner fails to meet his initial burden.
Therefore, we reverse the rejection of claims 5-83 as lacking
a written description. Next, we address the error correctable
by reissue.
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Error Correctable by Reissue
We begin by noting that 35 U.S.C. § 251, ¶ 1, specifies
in pertinent part the following remedy.
Whenever any patent is, through error without any
deceptive intention, deemed wholly or partly
inoperative or invalid, by reason of a defective
specification or drawing, or by reason of the
patentee claiming more or less than he had a right
to claim in the patent, the Commissioner shall, on
surrender of such patent ... reissue the patent for
the invention disclosed in the original patent ....
"'[T]he whole purpose of the [reissue] statute, so far as
claims are concerned, is to permit limitations to be added to
claims that are too broad or to be taken from claims that are
too narrow.’" In re Weiler, 790 F.2d 1576, 1580, 229 USPQ
673, 675 (Fed. Cir. 1986) (quoting In re Handel, 312 F.2d 943,
948,
136 USPQ 460, 464 (CCPA 1963)). “That is what the statute
means in referring to ‘claiming more or less than he had a
right to claim.’" Handel, 312 F.2d at 948, 136 USPQ at 464.
With these principles in mind, we consider the examiner's
rejection.
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The examiner asserts, "[a]n invention which comprises
'striations', which are not 'longitudinally extending', is not
an 'invention disclosed in the original patent.' 35 U.S.C.
251. Under 35 U.S.C. 112, applicant does not appear entitled
to broader claims 5-83 ...." (Examiner's Answer at 4.) In
other words, the examiner's rejection of claims 1-83 under 35
U.S.C. § 251 relies on his allegation that claims 5-83 lack a
written description. Because we already rejected the
allegation, we are not persuaded that the appellants failed to
satisfy the error requirement of 35 U.S.C. § 251. Therefore,
we reverse the rejection of claims 1-83 as lacking an error
correctable by reissue of the original patent. Next, and
last, we address the definiteness of claims 5-83.
Definiteness of Claims 5-83
We begin by noting the following principles. “The test
for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the
specification. If the claim read in light of the
specification reasonably apprise[s] those skilled in the art
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of the scope of the invention, Section 112 demands no more.”
Miles Labs., Inc. v.
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Shandon Inc., 997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed.
Cir. 1993) (internal citations omitted). Furthermore, a claim
should not be denied “solely because of the type of language
used to define the subject matter for which patent protection
is sought.” In re Swinehart, 439 F.2d 210, 212 n.4, 169 USPQ
226, 228 n.4 (CCPA 1971). With these principles in mind, we
consider the examiner's rejections on the grounds of
indefiniteness and the appellants' arguments.
First, the examiner alleges, "[i]n claims 13, 17, 21, 25,
29, 33, 37, 53, 57, 66 and 67 ... the scope of the
relationship of the 'contact opening' to the 'electrically
conductive storage node' is unclear. Compare claim 5."
(Examiner's Answer at 4-5.) The appellants argue, "the
relationship between 'contact opening 54' and 'the
electrically conductive storage node, conductive material 60,'
is clearly set forth in the specification at column 4, lines
51 through 68 continuing through column 6, lines 1 through 4,
and in drawing FIGS. 7 through 13. The contact opening 54 in
insulating dielectric 52 located on substrate 42 clearly has
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the electrically conductive storage node, conductive material
60, located therein." (Reply Br. at 14.)
Claims 13-40, 53-60, 66, and 67 each specifies in
pertinent part the following limitations: "at least one
contact opening ...; an electrically conductive storage ...."
The examiner fails to show that the limitations are
indefinite. "Even if ... claims are .. broader than they
otherwise would be, breadth is not to be equated with
indefiniteness, as we have said many times." In re Miller,
441 F.2d 689, 693, 169 USPQ 597, 600 (CCPA 1971).
Here, although the relationship between the claimed
electrically conducting storage and the claims contact opening
may not be recited in claims 13-40, 53-60, 66, and 67, the
omission is a matter of breadth, not of indefiniteness. The
specification discloses that "[e]lectrically conductive
material 60 fills grooved striations 58 of capacitor contact
opening 54." Col. 4, ll. 56-57. When read in light of the
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specification, one skilled in the art would understand that
the claimed electrically conductive storage fills grooved
striations of the claimed contact opening. We demand no more.
Second the examiner alleges, "in claims 53, 57, 61, 66-
68, 72, 76 and 80, the scope of 'partial' striations relative
to what is unclear." (Examiner's Answer at 5.) The
appellants argue, "[t]he only the claimed element having
partial striations is the 'electrically conductive layer
provided over the dielectric layer ... including partial
striations' which is illustrated with striations in drawing
FIG. 13 as the layer 66 which only has striations partially
translated into the outer surfaces thereof due to the
increasing thickness and corresponding smoothing effect by
subsequent layers." (Reply Br. at 14.)

Claims 53-64, 66, and 68-83 each specifies in pertinent
part the following limitations: "dielectric layer including
striations; and an electrically conductive layer provided over
the dielectric layer, the surface of the electrically
conductive layer including partial striations." Similarly,
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claims 67 specifies in pertinent part the following
limitations: "an electrically conductive layer provided over
the dielectric layer, a portion of the surface of the
electrically conductive layer including partial striations."
The examiner fails to show that the limitations are
indefinite. The specification discloses that "a conformal
capacitor cell layer 66 of conductive material, such as
conductively doped polysilicon, is conformally deposited atop
capacitor dielectric layer 64. Striations from internal and
external surfaces of layer 64 will probably only partially
translate to outer surfaces of layer 66 due to the increasing
thickness and corresponding smoothing effect imparted
by subsequent layers." Col. 5, ll. 22-29. When read in light
of the specification, one skilled in the art would understand
that the claimed striations on the surface of the electrically
conductive layer are partial relative to the claimed
striations of the dielectric layer. We demand no more.
Therefore, we reverse the rejection of claim 5-83 under 35
U.S.C. § 112.
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CONCLUSION
In summary, the rejection of claims 5-83 under 35 U.S.C.
§ 112, ¶ 1, as lacking a written description is reversed. The
rejection of claims 1-83 under 35 U.S.C. § 251 as lacking an
error correctable by reissue of the original patent is also
reversed. Furthermore, the rejection of claims 5-83 under
35 U.S.C. § 112, ¶ 2, as indefinite is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
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Administrative Patent Judge )
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JAMES R. DUZAN
TRASK, BRITT & ROSSA
P.O. BOX 2550
SALT LAKE CITY, UT 84110-2550
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LLB/dal