Ex parte Cooper et al.

Board of Patent Appeals and Interferences

Jul 31, 2000

08453689 (B.P.A.I. Jul. 31, 2000)

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(2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte KENT J. COOPER and SCOTT S. RUTH
________________
Appeal No. 1997-2688
Application 08/453,689
________________
ON BRIEF
________________
Before HAIRSTON, RUGGIERO and KRASS, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1997-2688
Application No. 08/453,689
2
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claims 1-20 and 50-68, all of the claims pending in the
present application. Claims 21-49 have been canceled.
The claimed invention relates to a contact structure in
an integrated circuit having a semiconductor substrate with a
trench isolation region formed therein which includes a trench
sidewall. Further included is a conductive member which has a
portion electrically coupled to a doped region which abuts the
trench sidewall. Appellants assert at page 2 of the
specification that the particular claimed contact structure
allows high density integrated circuits to be formed with low
contact resistance.
Representative claim 1 is reproduced as follows;
1. A contact structure in an integrated circuit
comprising:
a semiconductor substrate having a major surface;
Appeal No. 1997-2688
Application No. 08/453,689
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a trench isolation region lying within a first portion of
the semiconductor substrate, the trench isolation region
comprising a trench having a trench sidewall;
a first field effect transistor having a source/drain
electrode lying within a second portion of the semiconductor
substrate, the source/drain electrode having a first portion
and a second portion, the first portion having a first depth
and a first width and the second portion having a second depth
and a second width, wherein the first depth is greater than
the second depth and the first width is less than the second
width, and the first portion of the source/drain electrode
abuts the trench sidewall; and
a conductive member overlying the trench isolation
region, the conductive member having a first portion extending
into the trench adjacent to the trench sidewall, wherein the
first portion of the conducticve member is electrically
shorted to the first portion of the source/drain electrode of
the first field effect transistor.
No prior art references have been relied on by the
Examiner.
Claims 1-20 and 50-68 stand finally rejected as being
based on an inadequate disclosure under the written
description requirement of the first paragraph of under 35
U.S.C. § 112.
Appeal No. 1997-2688
Application No. 08/453,689
The Appeal Brief was filed October 22, 1996. In1
response to the Examiner’s Answer dated November 20, 1996, a
Reply Brief was filed January 22, 1997 which was acknowledged
and entered without further comment in the Supplemental
Examiner’s Answer dated February 3, 1997.
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Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the Briefs and Answers for the1
respective details.
OPINION
We note initially that Appellants have indicated (Brief,
page 4) that, for the purposes of this appeal, claims 1-20 and
50-68 will stand or fall together. Consistent with this
indication, both Appellants and the Examiner have directed and
limited their arguments to claim 1, the sole independent claim
on appeal. Accordingly, all the claims before us will stand
or fall together. Note In re King, 801 F.2d 1324, 1325, 231
USPQ 136, 137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989,
991, 217 USPQ 1, 3 (Fed. Cir. 1983). Therefore, we will only
consider the rejection against independent claim 1 as
representative of all the claims on appeal.
We have carefully considered the subject matter on
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Application No. 08/453,689
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appeal,
the rejection advanced by the Examiner, the arguments in
support of the rejection and the evidence relied upon by the
Examiner as support for the rejection. We have, likewise,
reviewed and taken into consideration, in reaching our
decision, Appellants’ arguments set forth in the Briefs along
with the Examiner’s rationale in support of the rejection and
arguments in rebuttal set forth in the Examiner’s Answers.
It is our view, after consideration of the record before
us, that Appellants’ specification in this application
describes the claimed invention in a manner which complies
with the requirements of 35 U.S.C. § 112. Accordingly, we
reverse.
The function of the description requirement of the
first paragraph of 35 U.S.C. § 112 is to ensure that the
inventor has possession, as of the filing date of the
application relied on, of the specific subject matter later
claimed by him.
In re Wertheim, 541 F. 2d 257, 262, 191 USPQ 90, 96 (CCPA
1976). "It is not necessary that the application describe the
claim limitations exactly, . . . but only so clearly that
persons of ordinary skill in the art will recognize from the
Appeal No. 1997-2688
Application No. 08/453,689
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disclosure that appellants invented processes including those
limitations." Wertheim, 541 F.2d at 262, 191 USPQ at 96,
citing In re Smythe, 480 F.2d 1376, 1382, 178 USPQ 279, 284
(CCPA 1973). Furthermore, the Federal Circuit points out that
"[i]t is not necessary that the claimed subject matter be
described identically, but the disclosure originally filed
must convey to those skilled in the art that applicant had
invented the subject matter later claimed." In re Wilder, 736
F.2d 1516, 1520, 222 USPQ 369,
372 (Fed. Cir. 1984), cert. denied, 469 U.S. 1209 (1985),
citing In re Kaslow, 707 F.2d 1366, 707 F.2d 1366, 1375, 217
USPQ 1089, 1096 (Fed. Cir. 1983).
In establishing a basis for a rejection under the written
description requirement of the statute, the Examiner has the
initial burden of presenting evidence or reasons why persons
skilled in the art would not recognize in an applicants’
disclosure a description of the invention defined by the
claims. Wertheim, 541 F.2d at 265, 191 USPQ at 98. After
reviewing the arguments of record, it is our opinion that the
Examiner has not provided sufficient reasons or evidence to
satisfy such burden.
With respect to representative independent claim 1, the
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Application No. 08/453,689
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Examiner initially asserts (Answer, page 3) a lack of
description in the original disclosure of the claimed relative
dimensional relationship of the first and second portions of
the source/drain electrode. We agree with the Examiner’s
observation that the specification part of Appellants’
original disclosure is silent as to the specific widths and
depths of the source/drain electrode. It is our view,
however, that, as argued by Appellants (Brief, page 8), the
original drawings, Figure 15 in particular, provide a clear
illustration of the claimed relative width and depth of the
first and second portions of the source/drain electrode. It
is well settled that drawings alone may provide a “written
description” of an invention as required by 35 U.S.C. § 112.
See, e.g., Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
“In those instances where a visual representation can flesh
out words, drawings may be used in the same manner and with
the same limitations as the specification.” Autogiro Co. of
America v. United States, 384 F.2d 391, 398, 155 USPQ 697, 703
(Ct. Cl. 1967).
Appellants’ description of the invention has further been
questioned by the Examiner with respect to the designation of
Appeal No. 1997-2688
Application No. 08/453,689
At page 2 of their Reply Brief, Appellants have2
submitted a definition of “electrode” from Webster’s Ninth New
Collegiate Dictionary as “a semiconductor device element that
emits or collects electrons or holes or that controls their
movements.”
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doped regions 72 and 74, illustrated in Figure 15, as
“electrodes”. In making this argument, the Examiner
emphasizes the qualifying “proper circumstances” to the
principle that drawings can be relied on to satisfy the
“written description” requirement of 35 U.S.C. § 112. As
asserted by the Examiner (Answer, page 6):
Those proper circumstances were described as
being, “[W]hat the drawing in fact discloses
to one skilled in the art.” Id. One of ordinary
skill in the art would not look at Figure 15 and
determine that elements 72 and 74 were electrodes.
After reviewing the totality of the arguments and
evidence in this case, however, we are in agreement with
Appellants’ position as stated in the Briefs. Initially, we
note that Appellants’ specification (page 8, lines 32-33)
specifically and unambiguously refers to doped regions 72 and
74 as “electrodes”. From the evidence of record, the
description of the operation of these doped regions at pages 8
and 9 of the specification is not inconsistent and certainly
not repugnant to accepted usage of the term “electrode.” 2
Appeal No. 1997-2688
Application No. 08/453,689
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Appellants may be their own lexicographer as
long as the meaning assigned to the term is not repugnant to
the
term’s well known usage. In re Hill, 161 F.2d 367, 73 USPQ
482 (CCPA 1947).
Further, the Examiner’s contention that the skilled
artisan would not determine from the illustration in
Appellants’ Figure 15 that doped regions 72 and 74 were
electrodes is totally devoid of support on the record. No
line of reasoning or evidence has been presented by the
Examiner to support such assertion. We are not inclined to
dispense with proof by evidence when the proposition at issue
is not supported by a teaching in a prior art reference,
common knowledge or capable of unquestionable demonstration.
Our reviewing court requires this evidence in order to
establish a prima facie case. In re Knapp-Monarch Co., 296
F.2d 230, 232, 132 USPQ 6, 8 (CCPA 1961); In re Cofer,
354 F.2d 664, 668, 148 USPQ 268, 271-72 (CCPA 1966).
For all of the above reasons, it is our opinion that
Appellants have satisfied the statutory written description
requirement because they were clearly in possession of the
invention at the time of filing of the application.
Appeal No. 1997-2688
Application No. 08/453,689
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Therefore, we do not sustain the rejection of representative
claim 1, nor of claims 2-20 and 50-68 which stand together
with claim 1, under
the first paragraph of 35 U.S.C. § 112. Accordingly, the
decision of the Examiner rejecting claims 1-20 and 50-68 is
reversed.
REVERSED
Kenneth W. Hairston )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Errol A. Krass )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Joseph F. Ruggiero )
Administrative Patent Judge )
Appeal No. 1997-2688
Application No. 08/453,689
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Harry A. Wolin
Motorola Inc
Austin Intellectual Property Law Section
MD: TX32 /PL02 770 West Parmer Lane
Austin TX 78729