Ex parte FUSE et al.

Board of Patent Appeals and Interferences

Jun 9, 1998

08136241 (B.P.A.I. Jun. 9, 1998)

Application for reissue filed October 15, 1993. 1
According to appellants, this Application is a Reissue of
Application 07/467,544 filed January 19, 1990, now Patent
Number 5,057,444, which issued on October 15, 1991, which is a
continuation of Application 07/191,788, now Patent No.
4,918,027 which issued on April 17, 1990, which is a
continuation of Application 06/836,514 filed March 5, 1986.
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(2) is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte GENSHU FUSE and TAKASHI OHZONE
________________
Appeal No. 96-1536
Application 08/136,2411
________________
ON BRIEF
________________
Before WILLIAM F. SMITH, METZ and JOHN D. SMITH,
Administrative Patent Judges.
METZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
Appeal No. 96-1536
Application 08/136,241
2
examiner's refusal to allow claims 1 through 3, all the claims
remaining in appellants' application for reissue of U.S.
Patent 5,057,444, which issued on October 15, 1991.
The appealed subject is directed to a process for
the preparation of various semiconductor devices.
Claim 2, which is illustrative of the claimed
process, is reproduced below for a more facile understanding
of appellants' invention.
2. A method of fabricating a trench capacitor
comprising:
a step of forming a trench in a semiconductor
substrate having a principle [sic, principal]
surface, said trench having four sidewalls which
extend into said substrate in a direction
perpendicular to said principal surface of said
semiconductor substrate and which are perpendicular
to each other, and said trench having a bottom
parallel to said principal surface;
a step
of forming an outer electrode including,

(a) a step of positioning said semiconductor
substrate in a first position;

(b) a step of implanting ions into a first side-wall
of said side-walls of said trench from a direction
inclined to a normal to a plane containing said
principal surface of said semiconductor substrate;

(c) a step of positioning said semiconductor
substrate in a second position which is different
from said first position by rotating said semiconductor
substrate by 90E about an axis of rotation which is
Appeal No. 96-1536
Application 08/136,241
3
perpendicular to said principal surface of said
semiconductor substrate;
(d) a step of implanting ions of the same type and
to the same extent as implanted in the first side-wall
into a second side-wall of said side-walls of said
trench from said direction inclined to the normal to
the plane containing said principal surface of said
semiconductor substrate;

(e) a step of positioning said semiconductor
substrate in a third position which is different from
said first and second positions by rotating said
semiconductor substrate by 90E about said rotation axis;

(f) a step of implanting ions of the same type and to the
same extent as implanted in said first and second side-walls
into a third side-wall of said side-walls of said trench from
said direction inclined to the normal to the plane containing
said principal surface of said semiconductor substrate;

(g) a step of positioning said semiconductor
substrate in a fourth position which is different from said
first, second and third positions by rotating said
semiconductor substrate by 90E about said rotation axis;

(h) a step of implanting
ions of the same type and to the same extent implanted in said
first, second and third side-walls into a fourth side-wall of
said side-walls of said trench from said direction inclined to
the normal to the plane containing said principal surface of
said semiconductor substrate;
wherein all of the
steps of implanting are carried out such that the extent of
implantation and type of ion are such that an outer electrode
is thereby formed along said four side-walls of said trench;

a step of forming an insulating layer within the trench
along the outer electrode; and
a step of
forming an inner electrode within the trench along the
insulating layer.
OPINION
Appeal No. 96-1536
Application 08/136,241
4
The only rejections before us for our consideration
are not founded on prior art. Accordingly, there are no
references of record which are being relied on by the
examiner.
Claim 2 stands rejected under 35 U.S.C. § 112, first
paragraph, on the grounds that the subject matter now claimed
is not described in appellants' original disclosure. Claims 1
through 3 stand rejected under 35 U.S.C. § 251 on the grounds
that there is no "reissuable error" (see page 3 of the
Answer).
Because the examiner's rejection under 35 U.S.C. § 251 is
founded entirely on the position taken by the examiner with
respect to the rejection under 35 U.S.C. § 112, all the
rejections stand or fall with the rejection under 35 U.S.C. §
112. We reverse.
The function of the "written description"
requirement of 35 U.S.C. § 112, first paragraph, is to ensure
that applicants had possession, as of the filing date of the
application relied on, of the subject matter later claimed by
them. In re Blaser, 556 F.2d 534, 537, 194 USPQ 122, 124, 125
Appeal No. 96-1536
Application 08/136,241
5
(CCPA 1977). The inquiry into satisfaction of the written
description requirement is factual and depends on the nature
of the invention and the amount of knowledge imparted to those
skilled in the art by the disclosure. In re Wertheim, 541
F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). Satisfaction of
the "written description" requirement does not require in
ipsis verbis antecedence in the originally filed application.
In re Lukach, 442 F.2d 967, 969, 169 USPQ 795, 796 (CCPA
1971). The question, therefore, is whether the originally
filed application would have reasonably conveyed to a person
of ordinary skill in the art that applicants invented the
subject matter later claimed by them including the limitations
in question. In re Smythe, 480 F.2d 1376, 1382, 178 USPQ 279,
284 (CCPA 1973).
As correctly noted by appellants at page 2 of their
Reply Brief, the examiner has improperly focused on a process
step which has been eliminated from claim 2 rather than
focusing on what is now being claimed by appellants in amended
claim 2. Claim 2, as amended, now describes a method of
fabricating a trench capacitor by forming a trench with four
Appeal No. 96-1536
Application 08/136,241
6
side-walls and a bottom. Subsequently, an outer electrode is
formed along said four side-walls in the trench by implanting
ions into each side-wall, serially, after rotating the
semiconductor 90E with respect to each previous implantation.
Thereafter, an insulating layer is formed within the trench
along the outer electrode. Finally, an inner electrode is
formed within the trench along the insulating layer.
At column 4, lines 47 through 50 of their patent,
appellants describe their technique of doping by rotating the
semiconductor in planarity four times in 90E increments as
useful for doping the side-walls of deep trenches in dynamic
RAM cell capacitors. In column 6, lines 20 through 42,
appellants describe the preparation of one cell of a dynamic
RAM. At lines 27 through 30 of column 6, the formation of a
deep trench (68) is described with reference to Figure 9(b).
To form n-type regions (72, 74) in the side-walls, which
regions form one of the electrodes, each side-wall is, in
succession, doped with As+ ions (column 6, lines 30 through
34). In the next step, which step is depicted in Figure 9(c),
a thin insulation film (76) is formed on the inner wall of the
deep trench (68) and the other electrode (78) is formed by
doped polysilicon (column 6, lines 34 through 37). We find
Appeal No. 96-1536
Application 08/136,241
7
this disclosure clearly describes the subject matter now
claimed by appellants in amended claim 2.
We reject the examiner's theory that the rejection
under 35 U.S.C. § 112 is mandated by the M.P.E.P. § 1411.02
and United States Industrial Chemicals, Inc. v. Carbide &
Carbon Chemicals Corp., 315 U.S. 668, 53 USPQ 6 (1942). The
proper inquiry into satisfaction of the written description
requirement is factual and depends, not on what is omitted
from an amended claim but, what is now being claimed by the
amended claim. Further, the examiner has failed to establish,
as was his burden, why the omission of one process step in a
multi-step process described in the disclosure as optional
(see column 4, lines 64 through column 5, line 2) can be
considered to be not described ("new matter").
Moreover, as correctly noted by appellants, the
statute has been amended since the decision in United States
Industrial Chemicals, Inc. and the statute now requires only
that the reissue application is for "the invention disclosed
in the original patent" 35 U.S.C. § 251 (1997). See In re
Amos, 953 F.2d 613, 616-619, 21 USPQ2d 1271, 1273, 1274 (Fed.
Cir. 1991); In re Hounsfield, 699 F.2d 1320, 216 USPQ 1045
Appeal No. 96-1536
Application 08/136,241
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(Fed. Cir. 1983).
Finally, we recognize that the disclosure at column
6 describing the various embodiments of Figure 9 also includes
a step of first etching isolation trenches in the
semiconductor substrate. We also recognize that appellants'
claim 2 does not recite or require said first etching step.
Nevertheless, as a "comprising" claim, claim 2 does not
exclude such a step, or any other step not recited. In re
Baxter, 656 F.2d 679, 686, 210 USPQ 795, 802 (CCPA 1981).
Accordingly, we hold that appellants' claims 2 is
not rendered unpatentable under 35 U.S.C. § 112 and claims 1
through 3 are not unpatentable under 35 U.S.C. § 251. The
decision of the examiner is REVERSED.
REVERSED
WILLIAM F. SMITH )
Administrative
Patent Judge)
)

)
)
ANDREW H. METZ ) BOARD OF
PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
Appeal No. 96-1536
Application 08/136,241
9
)
)
JOHN D. SMITH )
Administrative Patent Judge)
)
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