Ex parte Hill

Board of Patent Appeals and Interferences

Aug 4, 1999

08159648 (B.P.A.I. Aug. 4, 1999)

Application for patent filed November 30, 1993. 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journal and (2) is not binding precedent of the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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DARRELL G. HILL
____________
Appeal No. 97-1542
Application No. 08/159,6481
____________
ON BRIEF
____________
Before HAIRSTON, FLEMING, and GROSS, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 12 and 18 through 21.
The disclosed invention relates to an integrated circuit.
Appeal No. 97-1542
Application No. 08/159,648
2
Claim 1 is illustrative of the claimed invention, and it
reads as follows:
1. An integrated circuit, comprising:
(a) at least one transistor formed at a frontside surface
of a substrate;
(b) a first ground plane covering portions of said
frontside surface, wherein portions of said transistor remain
uncovered by said first ground plane;
(c) an insulating layer over said uncovered portions of
said transistor;
(d) a bond pad at a backside surface of said substrate,
said backside surface opposite said frontside surface; and
(e) a conducting via through said substrate coupling said
at least one transistor to said bond pad.
No references were relied on by the examiner.
Claims 1 through 12 and 16 through 21 stand rejected
under the first paragraph of 35 U.S.C. § 112 for "containing
subject matter which was not described in the specification in
such a way as to enable one skilled in the art to which it
pertains, or with which it is most nearly connected, to make
and/or use the invention" (Answer, page 3). According to the
examiner (Answer, page 4), "[t]he newly added claim
limitation, 'a first ground plane covering portions of said
frontside surface,' in claim[s] 1 and 9 pertaining to partial
Appeal No. 97-1542
Application No. 08/159,648
The first paragraph of 35 U.S.C. § 112 includes three2
distinct sections (i.e., enablement, written description, and
best mode). The rationale for rejecting the claims on appeal
is the lack of written description (Answer, page 4), and not
the lack of enablement (Answer, page 3).
3
coverage of the first ground plane is not supported by the
specification," and "the coverage of the insulative layer over
the uncovered portions is not supported by the specification."
Appellant argues (Brief, page 4) that "every element of
the disputed portions of the claims are [sic] supported in the
drawings," and "[t]he portions of the specification supporting
Figures 6a and 6b also supports [sic] the claimed invention."
Reference is made to the brief and the answer for further
detailed positions of the appellant and the examiner.
OPINION
The lack of written description rejection of claims 12
through 12 and 18 through 21 is reversed.
We agree with the appellant that the referenced portion
of the specification (page 11, last paragraph), and the
drawing provide adequate written description for the
questioned claim limitations. The drawing (Figures 6a and 6b)
shows "a first ground plane [620] covering portions of said
Appeal No. 97-1542
Application No. 08/159,648
4
frontside surface" of substrate 600, "an insulating layer
[622] over . . . uncovered portions of . . . transistor" 602
or 612, and "an insulating layer [622] over a base contact
[606] and an emitter contact [608] of . . . transistor" 602.
DECISION
The decision of the examiner rejecting claims 1 through
12 and 18 through 21 under the first paragraph of 35 U.S.C. §
112 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
Appeal No. 97-1542
Application No. 08/159,648
5
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
lp
Appeal No. 97-1542
Application No. 08/159,648
6
CARLTON H. HOEL
TEXAS INSTRUMENTS PATENT DEPARTMENT
MAIL STATION 219, P.O. BOX 655474
DALLAS, TX 75265
Leticia
Appeal No. 97-1542
Application No. 08/159,648
APJ HAIRSTON
APJ GROSS
APJ FLEMING
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s): _____
Prepared: March 23, 2000
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT