Ex parte Esquivel

Board of Patent Appeals and Interferences

Aug 31, 2000

08484196 (B.P.A.I. Aug. 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not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte AGERICO L. ESQUIVEL
__________
Appeal No. 1997-1247
Application 08/484,196
___________
ON BRIEF
___________
Before THOMAS, BARRETT, and LALL, Administrative Patent
Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 25
to 34, all the other claims having been canceled.
The disclosed invention pertains to an integrated circuit
with rows and columns of floating-gate programmable memory
cells having slot trench isolation structures among the memory
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Application 08/484,196
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cells.
The trenches are dielectric filled and are segmented. The
invention is further illustrated below by claim 25.
25. A programmable memory device having a memory array
formed in a semiconductor body including a plurality of memory
cells arranged into rows and columns comprising:
a plurality of parallel and spaced apart slot trenches,
said slot trenches formed in sequences between said columns,
said slot trenches located at the crossings of diagonals with
respect to said rows and columns, each of said slot trenches
extending below said surface of said semiconductor body
between said columns;
a plurality of floating gates formed on a surfce (sic) of
said semiconductor body but separated from said surface of
said semiconductor body by a gate dielectric, said floating
gates positioned between said slot trenches;
a plurality of control gates, each of said control gates
extending over at least one of said floating gates and a
portion of said slot trenches, said control gates running
perepndicular (sic) to said slot trenches and parallel of each
other, exactly two of said control gates running over each of
said slot trenches away from the periphery of the array of
said rows and columns of memory cells; and
a plurality of source/drain regions formed in said
semiconductor body between said control gates and between said
slot trenches.
The references relied on by the Examiner are:
Gill et al. (Gill) 5,045,489 Sep. 3, 1991
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Japanese Published Patent Applications
Seiya 61-184883 Aug. 18, 1986
Koyama 62-84550 Apr. 18, 1987
Claims 25 to 34 stand rejected under 35 U.S.C. § 112,
second paragraph. Claims 25 to 31 and 34 stand rejected under
35 U.S.C. § 103 over Koyama, and claims 32 and 33 over Koyama,
Gill and Seiya.
Reference is made to Appellant’s brief and the Examiner's
answer for their respective positions.
OPINION
We have considered the record before us, and we will
reverse the rejection of claims 25 to 34 under 35 U.S.C. §
112, second paragraph. We will also reverse both rejections
under 35 U.S.C. § 103.
At the outset, we note that Appellant has elected [brief,
page 2] claims 25 to 33 and 34 as group I, and claim 34 as
group II. We will take both the groups together for the
section 112 rejection first and treat the two groups
separately for the section 103 rejections.
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Rejection under 35 U.S.C. § 112
The second paragraph of 35 U.S.C. § 112 requires claims
to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re
Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
In making this determination, the definiteness of the language
employed in the claims must be analyzed, not in a vacuum, but
always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted
by one possessing the ordinary level of skill in the pertinent
art. Id.
The Examiner's focus during examination of claims for
compliance with the requirement for definiteness of 35 U.S.C.
§ 112, second paragraph, is whether the claims meet the
threshold requirements of clarity and precision, not whether
more suitable language or modes of expression are available.
Some latitude in the manner of expression and the aptness of
terms is permitted even though the claim language is not as
precise as the Examiner might desire. If the scope of the
invention sought to be
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patented cannot be determined from the language of the claims
with a reasonable degree of certainty, a rejection of the
claims under 35 U.S.C. § 112, second paragraph, is
appropriate.
In the instant case, the Examiner points to the “the
crossings” (claim 25) aslacking an antecedent basis, and
“perepndicular” (claim 25) being not the same “perpendicular”
being argued in the brief. The Examiner also asserts [answer,
page 3] that the specification and the drawings do not
distinctly illustrate the orientation defined by “exactly two
of said control gates running over each of said slot trenches
away from the periphery [of the array of said rows and columns
of memory cells].” the periphery [of the array of said rows
and columns of memory cells].”
Appellant responds to each of these points on page 4 of
the brief. We agree with Appellant that an artisan would have
recognized that the word “the” in the phrase “the crossing” is
being used as an article and does not require an antecedent
basis. Similarly, the word “perepndicular” simply is a
typographical error. Furthermore, an artisan would have
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understood the recited orientation defined by “exactly two ...
[...cells]” by virtue of the geometrical characteristics of an
array.
We therefore conclude that the Examiner’s position does
not pass muster under the above case law for the section 112,
second paragraph rejection.
Rejection under 35 U.S.C. § 103
Before we discuss the two groups of claims, we note the
general discussion of an obviousness rejection. 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
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invention. Such reason must stem from some teaching,
suggestion or implication in the prior art 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. System., 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).
Furthermore, the Federal Circuit states that “[the] 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.”
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In Re Fitch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In Re Gordon, 773 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). “Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor.” Para-Ordnance Mfg. V. SGS
Importers Int’l, 73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239
(Fed. Cir. 1995), citing W. Lish. Gore & Assocs., v. Garlock,
Inc., 721 F.2d 1540, 1551, 220 USPQ 303, 311 (Fed. Cir. 1983).
Claims 25 to 33
We consider claim 25 as the representative claim. After
reviewing the positions of the Examiner [answer, pages 4 to 6]
and Appellant [brief, page 3], we are convinced that Koyama,
the base reference used for the obviousness rejection, does
not disclose the claimed limitation of [see figs. 8 and 9 of
the specification for the configuration] “plurality of
parallel and spaced apart slot trenches ... located at the
crossings of diagonals with respect to said rows and columns.”
The trenches in Koyama, 15a and 15b, form a continuous grid-
like set of grooves and, in such a configuration, the claimed
phrase “slot trenches located at the crossings of diagonals”
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would not have any significance or relevance. We also do not
find how Koyama
could suggest the claimed configuration of the slot trenches.
Therefore, we do not sustain the obviousness rejection of
claim 25, and its grouped claims 26 to 31 over Koyama.
With respect to claims 32 and 33, the Examiner has added
two other references, Gill and Seiya. However, they, singly
or together, do not cure the deficiency noted above. Thus, we
also do not sustain the obviousness rejection of claims 32 and
33 over Koyama, Gill and Seiya.
Claim 34
We have evaluated the Examiner’s position [answer, pages
5 and 6] and Appellant’s arguments [brief, page 3] and
conclude that claim 34 would not have been obvious over
Koyama. We agree with Appellant that Koyama does not disclose
or teach the claimed limitation of “said trenches being filled
with a dielectric material.” Whereas we agree with the
Examiner that item 16 (fig. 2a) in Koyama is an insulator
(dielectric) and can be considered as “filling” the trench 15,
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we can not ignore the fact that the other part of the trench
is in direct contact with the substrate; see items 11, 15 and
17 in fig. 2b. The configuration of the latter part of the
trench is thus opposite to the above claimed limitation.
Therefore, we do not sustain the obviousness rejection of
claim 34 over Koyama.
In conclusion, we do not sustain the Examiner’s
rejections of claims 25 to 34 under 35 U.S.C. § 112, second
paragraph, and under 35 U.S.C. § 103.
DECISION
The decision of the Examiner rejecting claims 25 to 34
under 35 U.S.C. § 112, second paragraph and under 35 U.S.C.
§ 103 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT )
Appeal No. 1997-1247
Application 08/484,196
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Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
PSL:pgg
Carlton H. Hoel
Texas Instruments Incorporated
Patent Department M S 219
P.O. Box 655474
Dallas, TX 75265