Ex parte Chang et al.

Board of Patent Appeals and Interferences

Aug 17, 1998

08242993 (B.P.A.I. Aug. 17, 1998)

Application for patent filed May 16, 1994. According to1
appellants, the application is a continuation of Application
08/024,026, filed March 1, 1993, abandoned.
1
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(2) is not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KO-MIN CHANG,
BRUCE L. MORTON, CLINTON C. KUO,
KEITH E. WITEK
and
KENT J. COOPER
_____________
Appeal No. 95-3388
Application 08/242,9931
______________
ON BRIEF
_______________
Appeal No. 95-3388
Application 08/242,993
2
Before KRASS, FLEMING and CARMICHAEL, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejec-
tion of claims 1 through 42, all of the claims present in the
application.
The invention relates to memory cell circuitry. In
particular, a transmission gate is coupled to a storage device
to function as a select gate for the storage device.
The independent claim 1 is reproduced as follows:
1. A memory cell comprising:
a voltage terminal;
means for storing a binary value coupled to the
voltage terminal and formed as a single device selected from a
group consisting of: a floating gate device, a ferroelectric
storage device, and a ferromagnetic storage device;
a select gate having a first terminal coupled to
only one of the means for storing and a second terminal,
wherein the select gate is further characterized as being a
transmission gate which comprises a plurality of transistors
coupled in parallel; and
Appeal No. 95-3388
Application 08/242,993
3
a conductor coupled to the second terminal of the
select gate for communicating with the memory cell.
The Examiner relies on the following references:
Dhong et al. (Dhong) 4,910,709 Mar. 20,
1990
Kawai et al. (Kawai) 5,146,429 Sept. 8,
1992
Claims 1 through 3, 5 through 13, 15 through 26, 28
through 30, 32 through 37, 40 through 42 stand rejected under
35 U.S.C. § 103 as being unpatentable over Dhong and Appel-
lants' prior art admission found on page 1, lines 11-21, of
Appellants' specification. Claims 4, 14, 27, 31, 38 and 39
stand rejected under 35 U.S.C. § 103 as being unpatentable
over Dhong and Appellants' prior art admission found on page
1, lines 11-21, of Appellants' specification further in view
of Kawai.
Rather than reiterate the arguments of Appellants
and the Examiner, reference is made to the brief and answer
for the respective details thereof.
OPINION
Appeal No. 95-3388
Application 08/242,993
4
After a careful review of the evidence before us, we
agree with the Examiner that claims 26 through 28, 30, 31 and
35 are properly rejected under 35 U.S.C. § 103. Thus, we will
sustain the rejection of these claims but we will reverse the
rejection of the remaining claims on appeal for the reasons
set forth infra.
Turning to Appellants' claims 1 through 25, 29, 32
through 34 and 36 through 42, the Examiner has failed to set
forth a prima facie case. It is the burden of the Examiner to
establish why one having ordinary skill in the art would have
been led to the claimed invention by the express teachings or
suggestions found in the prior art, or by implications con-
tained in such teachings or suggestions. In re Sernaker, 702
F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983). "Additionally,
when determining obviousness, the claimed invention should be
considered as a whole; there is no legally recognizable
'heart' of the invention." Para-Ordnance Mfg. v. SGS Importers
Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed.
Cir. 1995), cert. denied, 117 S.Ct. 80 (1996) citing W. L.
Appeal No. 95-3388
Application 08/242,993
5
Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548,
220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
Appellants argue on pages 5 through 7 of the brief
that neither Dhong nor the sentences found on page 1, lines
11-21, of the Appellants' specification teaches or suggests an
EPROM, EEPROM, flash, non-volatile, or like device is inter-
changeable. Appellants argue that Dhong teaches a DRAM device
and does not suggest using these other memory technologies.
Appellants further argue that the sentences found on page 1,
lines 11-21, are not an admission that one of ordinary skill
in the art would have reason to modify the Dhong system by
substituting the Dhong DRAM with these other memory technolo-
gies mentioned on page 1 of the Appellants' specification.
Upon our review of Appellants' specification, we
find that Appellants' statements are only an admission that
these other memory technologies are known, but does not sug-
gest that these memories are interchangeable. We fail to find
Appeal No. 95-3388
Application 08/242,993
6
that Dhong suggests any reason to substitute other memory
technologies for the Dhong DRAM.
The Federal Circuit states that "[t]he mere fact
that the prior art may be modified in the manner suggested by
the Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). Furthermore, rejecting
patents solely by finding prior art corollaries for the
claimed elements would permit an examiner to use the claimed
invention itself as a blueprint for piecing together elements
in the prior art to defeat the patentability of the claimed
invention. Such an approach would be an illogical and inap-
propriate process by which to determine patentability. In re
Denis Rouffet, 1998 U.S. App. 16414 (Fed Cir. July 15, 1998).
Turning to Appellants' claims, we find that Appel-
lants' claims 1 through 25, 33, 34, 36, 37, 40 through 42
recite memory
Appeal No. 95-3388
Application 08/242,993
7
devices comprised of either a floating gate device, a
ferroelectric storage device, a ferromagnetic storage device,
an electrically erasable programmable read only memory
(EEPROM), an electrically programmable read only memory
(EPROM) or a flash floating gate memory. Upon a careful
review of Appellants' specification, we find that Appellants'
statements found on page 1 of the specification only admit
that DRAM, SRAM, EEPROM, EPROM, flash EEPROM are known, but do
not admit that one of ordinary skill in the art would have
reason to substitute these memory technologies with dynamic
random access memory technologies. Furthermore, we fail to
find any suggestion by Dhong to substitute these memory
technologies with the Dhong DRAM.
In addition, the Examiner has not shown that the
prior art suggested the desirability of the Examiner's
proposed modification. Furthermore, we fail to find that
Kawai supplies this missing teaching or suggestion.
Therefore, we find that the Examiner has failed to establish
why one having ordinary skill in the art would have been led
to the claimed invention by teachings or suggestions found in
Appeal No. 95-3388
Application 08/242,993
8
the prior art and we will not sustain the rejection of claims
1 through 25, 33, 34, 36, 37, 40 through 42 under 35 U.S.C. §
103.
Turning to the rejection of claims 29, 32, 38 and
39, Appellants argue that Dhong fails to teach or suggest a
"decoding device having an N channel transistor connected in
parallel with a P channel transistor." The Examiner does not
address this issue. Upon a review of Dhong and Kawai, we fail
to find such a teaching. Therefore, we will not sustain the
rejection of claims 29, 32, 38 and 39 as well.
Turning to the rejection of claims 26 through 28,
30, 31 and 35 under 35 U.S.C. § 103, we note that Appellants
have indicated on page 5 of the brief the groupings of the
claims. However, Appellants have not argued claims 26 through
28, 30, 31 and 35 separately. 37 CFR § 1.192(c)(5) amended
October 22, 1993 states:
For each ground of rejection which
appellant contests and which applies to
more than one claim, it will be presumed
that the rejected claims stand or fall
Appeal No. 95-3388
Application 08/242,993
9
together unless a statement is included
that the rejected claims do not stand or
fall together, and in the appropriate part
or parts of the argument under subparagraph
(c)(6) of this section appel-lant presents
reasons as to why appellant considers the
rejected claims to be separately
patentable.
As per 37 CFR § 1.192(c)(5), which was controlling at the time
of Appellants’ filing the brief, we will, thereby, consider
Appellants’ claims 26 through 28, 30, 31 and 35 to stand or
fall together.
We note that unlike the above claims, Appellants'
claims 26 through 28, 30, 31 and 35 are not limited to a
Markush group of memory technology that does not encompass the
Dhong memory. Appellants' claims 26 through 28, 30, 31 and 35
are only limited to a Markush group that includes "a random
access memory." We note that Dhong discloses a dynamic random
access memory which is a random access memory. Therefore, we
find that Dhong meets Appellants' Markush group limitation
which is recited in these claims.
Furthermore, we note that Appellants have chosen not
to argue any of the other specific limitations of claims 26
Appeal No. 95-3388
Application 08/242,993
10
through 28, 30, 31 and 35 as a basis for patentability. We
are not required to raise and/or consider such issues. As
stated by our reviewing court in In re Baxter Travenol Labs.,
952 F.2d 388, 391, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991),
“[i]t is not the function of this court to examine the claims
in greater detail than argued by an appellant, looking for
nonobvious distinctions over the prior art.” 37 CFR §
1.192(a) as amended at 58 Fed. Reg. 54510, Oct. 22, 1993,
which was controlling at the time of
Appellants’ filing the brief, states as follows:
The brief . . . must set forth the
authorities and arguments on which the
appellant will rely to maintain the appeal.
Any arguments or authorities not included
in the brief may be refused consideration
by the Board of Patent Appeals and
Interferences.
Also, 37 CFR § 1.192(c)(6)(iv) states:
For each rejection under 35 U.S.C. 103, the
argument shall specify the errors in the
rejection and, if appropriate, the specific
limitations in the rejected claims which
are not described in the prior art relied
on in the rejection, and shall explain how
such limitations render the claimed subject
matter unobvious over the prior art. If
Appeal No. 95-3388
Application 08/242,993
11
the rejection is based upon a combination
of references, the argument shall explain
why the references, taken as a whole, do
not suggest the claimed subject matter, and
shall include, as may be appropriate, an
explanation of why features disclosed in
one reference may not properly be combined
with features disclosed in another
reference. A general argument that all the
limitations are not described in a single
reference does not satisfy the requirements
of this paragraph.
Thus, 37 CFR § 1.192 provides that this board is not under any
greater burden than the court which is not under any burden to
raise and/or consider such issues. Therefore, we will sustain
the Examiner's rejection of claims 26, 28, 30 and 35 under
35 U.S.C. § 103 as being unpatentable over Dhong and the
Examiner's rejection of claims 27 and 31 under 35 U.S.C. § 103
as being unpatentable over Dhong and Kawai.
In view of the foregoing, the decision of the
Examiner rejecting claims 26 through 28, 30, 31 and 35 under
35 U.S.C. § 103 is affirmed, but we reverse the rejection of
claims 1 through 25, 29 and 32 through 34 and 36 through 42
under 35 U.S.C. § 103.
Appeal No. 95-3388
Application 08/242,993
12
No time period for taking any subsequent action in
con- nection with this appeal may be extended under 37 CFR
§ 1.136(a). AFFIRMED-IN-PART
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Appeal No. 95-3388
Application 08/242,993
13
Maurice J. Jones
Motorola, Inc.
Intellectual Property Department
Suite 500
505 Barton Springs Road
Austin, TX 78704