Ex parte HSU et al.

Board of Patent Appeals and Interferences

Jun 17, 1998

07968736 (B.P.A.I. Jun. 17, 1998)

Application for patent filed October 30, 1992.1
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(2) is not binding precedent of the Board.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 LOUIS LU-CHEN HSU, CHANG-MING HSIEH,
and SEIKI OGURA
_____________
Appeal No. 95-3637
Application 07/968,7361
______________
ON BRIEF
_______________
Before JERRY SMITH, FLEMING and LEE, Administrative Patent
Judges.

LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision under 35 U.S.C. § 134 from the final
rejection of claims 1-4, and 9-15. Claims 5-8 have been
withdrawn from consideration. Claim 16 has been allowed.
References relied on by the Examiner
Lee 5,041,886 Aug. 20, 1991
Appeal No. 95-3637
Application 07/968,736
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The Rejections on Appeal
Claims 1-4 and 9-15 stand finally rejected under 35
U.S.C.
§ 103 as being unpatentable over Lee.
The Invention
The invention is directed to an integrated EEPROM wherein
the select and floating gates are each formed from polysilicon
sidewalls. Claims 1 and 9 are independent claims and are
reproduced below:
1. An EEPROM cell comprising a dual-gate transistor
having a select gate, a floating gate and a control gate
disposed on top of the floating gate, said gates being
disposed above a channel and between a source and drain, said
select gate being separated vertically from said channel by a
gate oxide, said floating gate being separate vertically from
said channel by a tunnel oxide and said control gate being
separated vertically from said floating gate by a second layer
of insulator; characterized in that:
said select and floating gates are each formed from
polysilicon sidewalls and are separated horizontally by a thin
vertical insulating member.
9. An integrated circuit EEPROM comprising:
input/output means for passing data into and out from
said EEPROM;
Appeal No. 95-3637
Application 07/968,736
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voltage generating means for generating a predetermined
program voltage;
voltage steering means for directing said program voltage
along predetermined program paths in said circuit; and a
memory array comprising;
a set of dual-gate field effect transistor memory cells,
each dual-gate transistor comprising a select gate, a control
gate and a floating gate disposed above a channel and between
said common source and a drain, said select gate being
separated vertically from said channel by a gate oxide, said
floating gate being separated vertically from said channel by
a tunnel oxide and said control gate being separated
vertically from said floating gate by a second layer of
insulator, characterized in that;
said select and floating gates are each formed from
polysilicon sidewalls having a vertical side and are separated
horizontally by a thin vertical insulating member adjacent
said vertical side of said select and floating gates.
Opinion
We sustain the rejection of claims 1, 3, 9, 11, 13 and
15, but not the rejection of claims 2, 4, 10, 12 and 14.
Our opinion is based only on the arguments presented by
the appellants in their briefs. Arguments not raised in the
briefs are not before us, are not at issue, and are considered
waived.
Appeal No. 95-3637
Application 07/968,736
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As argued by the appellants, the sole difference between
the subject matter of independent claims 1 and 9, and that
disclosed by Lee is that both the select and floating gates of
the claimed invention are "formed from polysilicon sidewalls,"
not just the select gate.
The appellants state (Br. at 4):
The term "sidewall" has been used in the application
consistent with standard terminology in the art to
refer to a generally vertical member that is the
residue of a conformal layer after horizontal
portions have been etched in an anisotropic process.
However, the appellants fall short of asserting that the
term "sidewall" has an established meaning in the art that can
"only" have the meaning urged by the appellants and which
makes unreasonable "any other" interpretation. That the term
"sidewall" may frequently or usually take on the meaning urged
by the appellants does not mean it has no other reasonable
interpretation. Here, the appellants’ specification does not
specially define the term but merely uses it descriptively.
Other meanings are not excluded by the specification.
Even if the appellants had asserted that the term
"sidewall" has an established meaning in the art that can
Appeal No. 95-3637
Application 07/968,736
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"only" have the meaning urged by the appellants and no other
reasonable interpretation, no evidence has been submitted in
support of the assertion. Mere argument of counsel does not
take the place of evidence. In re Langer, 503 F.2d 1380,
1395, 183 USPQ 288, 299 (CCPA 1974). See also Meitzner v.
Mindick, 549 F.2d 775, 782, 193 USPQ 17, 22 (CCPA 1977), cert.
denied, 434 U.S. 854, 195 USPQ 465 (1977). We decline to
regard argument as fact, especially an argument not actually
made by the appellants, i.e., that the meaning for "sidewall"
as urged by the appellants is the only reasonable meaning and
that the established meaning for "sidewall" excludes or
prohibits the broader reading by the examiner.
The examiner is interpreting the term "sidewall"
according to its ordinary meaning in the English language. We
agree with the examiner that the structure shown in Lee’s
Figures 15A and 16A includes a vertical surface of silicon
oxide 105 between and immediately adjacent the select gate on
one side thereof and the floating gate on the other. Claim
terms are properly interpreted during examination based on
their broadest reasonable interpre- tation in light of the
Appeal No. 95-3637
Application 07/968,736
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specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989); In re Yamamoto, 740 F.2d 1569,
1571, 222 USPQ 934, 936 (Fed. Cir. 1984); In re Pearson, 494
F.2d 1399, 1404, 181 USPQ 641, 645 (CCPA 1974); In re Prater,
415 F.2d 1393, 1404, 162 USPQ 541, 550 (CCPA 1969). In our
view, it is reasonable for the examiner to regard select gate
30 and floating gate 10 in Lee as sidewalls to the vertical
silicon oxide surface existing therebetween, in the absence of
evidence sufficient to demonstrate for the term "sidewall" an
established meaning in the art which does not permit or allow
the simple interpretation by the examiner.
Finally, even if the appellants have established that the
term "sidewall" has the meaning urged on page 4 of their
brief, and that that is the only reasonable interpretation of
the term, it would not help their case, since structural
claims generally are not limited by process steps used in the
making of the structure. As is specifically stated by the
Federal Circuit in In re Thorpe, 777 F.2d 695, 697, 227 USPQ
964, 966 (1985):
[E]ven though product-by-process claims are limited
by and defined by the process, determination of
Appeal No. 95-3637
Application 07/968,736
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patentability is based on the product itself.
[Citations omitted.]
The patentability of a product does not depend
on its method of production. In re Pilkington, 411
F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). If
the product in a product-by-process claim is the
same as or obvious from a product of the prior art,
the claim is unpatentable even though the prior
product was made by a different process. In re
Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-93
(Fed. Cir. 1983); Johnson & Johnson v. W.L. Gore,
436 F.Supp. 704, 726, 195 USPQ 487, 506 (D. Del.
1977); see also In re Fessman, 489 F.2d 742, 180
USPQ 324 (CCPA 1974).
Thus, different manufacturing process steps do not serve
to distinguish resulting structures which are otherwise the
same. The appellants have failed to demonstrate that in the
absence of the process step of forming the select and floating
gates as the vertical residue of a conformal layer after the
horizontal portions of the conformal layer have been removed
by anisotropic etching, the claimed polysilicon select and
floating gates are any different from those of Lee.
For the foregoing reasons, we sustain the rejection of
claims 1, 3, 9, 11, 13 and 15.
As for dependent claims 2, 4, 10, 12 and 14, the examiner
is incorrect that the appellants have grouped them together
Appeal No. 95-3637
Application 07/968,736
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with independent claims 1 and 9. Indeed, on page 3 of the
brief, the appellants specified two separate groups for
argument, and on page 6 the appellants advanced arguments for
claims 2, 4, 10, 12 and 14 as a second group.
The examiner has failed to address and account for the
claimed features of dependent claims 2, 4, 10, 12 and 14. The
initial burden is on the examiner to establish a prima facie
basis to reject the claims. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The
examiner must provide a factual basis to support an
obviousness conclusion. In re Warner, 379 F.2d 1011, 1017,
154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057
(1968) (The examiner may not resort to speculation,
assumptions, or hindsight reconstruction); In re Lunsford, 357
F.2d 385, 391, 148 USPQ 721, 725 (CCPA 1966) (The provisions
of section 103 must be followed realistically to develop the
factual background against which the section 103 determination
must be made); In re Freed, 425 F.2d 785, 787, 165 USPQ 570,
571 (CCPA 1970) (A determination of obviousness must be based
Appeal No. 95-3637
Application 07/968,736
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on facts and not on unsupported generalities). Accordingly,
the rejection of dependent claims 2, 4, 10, 12 and 14 cannot
be sustained.
Conclusion
The rejection of claims 1, 3, 9, 11, 13 and 15 under 35
U.S.C. § 103 as being unpatentable over Lee is affirmed.
The rejection of claims 2, 4, 10, 12 and 14 under 35
U.S.C. § 103 as being unpatentable over Lee is reversed.
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
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Appeal No. 95-3637
Application 07/968,736
10
JAMESON LEE )
Administrative Patent Judge )
Appeal No. 95-3637
Application 07/968,736
11
Eric W. Petraske
Intellectual Property Law
IBM Corporation
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