Ex parte Maniar

Board of Patent Appeals and Interferences

Sep 4, 1997

07965314 (B.P.A.I. Sep. 4, 1997)

Application for patent filed Oct. 23, 1992. According to1
the appellant, the application is a division of Application
07/650,119, filed Feb. 4, 1991, now Patent No. 5,186,745.
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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 PAPU D. MANIAR
__________
Appeal No. 95-2063
Application 07/965,3141
__________
ON BRIEF
__________
Before GARRIS, WEIFFENBACH, and ELLIS Administrative Patent
Judges.
ELLIS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 12, 13, 16, and 20 through 22, which are all the claims
pending in the application.
Appeal No. 95-2063
Application 07/965,314
2
As an initial matter we note the appellant’s statement in
the main brief that the claims do not stand or fall together.
Brief, p. 4; 37 CFR 1.192(c)(5)(1994); now 37 CFR § 1.192(c)(7).
The appellant has (i) presented two claim groupings; i.e., Group
A comprising claims 12, 13, and 16, and Group B comprising claims
20 through 22, and (ii) argued the two groups separately.
Accordingly, for purposes of this appeal, we have considered the
issues as they apply to representative claims from each group
which in this case are, claims 12, 20 and 21. The claims are
attached as an appendix to this decision.
The examiner does not rely on any prior art.
The appealed claims stand rejected as follows:
I. Claims 12, 13, 16, and 20 through 22 stand rejected
under 35 U.S.C. § 112, first paragraph, as being based on
specification which fails to provide an adequate written
description of the invention and failing to provide support for
the invention as now claimed.
II. Claims 12, 13, 16, and 20 through 22 stand rejected
under 35 U.S.C. § 112, second paragraph, as being indefinite in
failing to particularly point out and distinctly claim the
subject matter which the appellant regards as the invention.
Appeal No. 95-2063
Application 07/965,314
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We have carefully considered the entire record on appeal
which includes the appellant’s main Brief (Paper No. 12) and
Reply Brief (Paper No. 14) and the examiner’s Answer (Paper No.
13). We reverse Rejection I with respect to Group A, claims 12,
13 and 16, and affirm with respect to Group B, claims 20 through
22. We reverse Rejection II in its entirety.
The claimed invention is directed to a method of making a
spin-on-glass (SOG) composition which comprises
tetraethylorthosilicate (TEOS), nitric acid, alcohol, and water.
According to the specification, the present SOG composition is
used for constructing superconductor devices.
Rejection I
A
The examiner urges that the preliminary amendment to
subsection (c) of claim 16 which changes the original range of
the alcohol volume from 70% to 90% to its current 70% to 85%
lacks descriptive support in the specification and, therefore,
constitutes the addition of new matter to the claim. According
to the examiner, the specification, as originally filed, fails to
Appeal No. 95-2063
Application 07/965,314
4
provide “expressive disclosure” of the claimed limitation.
Answer, p. 4. We find this position untenable.
To comply with the written description requirement, “the
applicant must . . . convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she
was in possession of the invention. The invention is, for
purposes of the ‘written description’ inquiry, whatever is now
claimed.” [Emphases in original.] Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
It is not necessary that the specification describe the claim
limitations exactly. In re Wertheim, 541 F.2d 257, 262, 191 USPQ
90, 96 (CCPA 1976). In reviewing the specification, we do not
find that the appellant has arbitrarily selected the presently
claimed volume range of alcohol. Rather, we find that the
specification discloses compositions having approximately 70-90%
by volume of alcohol (p. 4, line 29) and 74.5-81.5% by volume of
alcohol (p. 4, line 34). Moreover, in our view, one skilled in
the art would have understood, in reading the specification, that
because the alcohol content of the SOG composition must be
balanced with the ingredients specified in subsections (a) and
(b) of claim 12; i.e., the approximately 15% to 22% by volume of
tetraethylorthosilicate (TEOS) and the approximately 0.2% to 1.3%
Appeal No. 95-2063
Application 07/965,314
5
nitric acid, that the volume of alcohol could be no greater than
approximately 85% by volume. One skilled in the art would have
arrived at this realization by means of simple mathematics, and
understood that it was not physically possible to have an upper
limit of 90% by volume of alcohol. That is, one of skilled in
the art would have recognized that an SOG composition cannot
contain the lowest claimed limit of TEOS (15% by volume), the
lowest claimed limit of nitric acid (0.2% by volume) and the
maximum claimed limit of alcohol (90% by volume) because the
total contents would exceed 100%. Accordingly, we find, as a
factual matter, that the specification inherently discloses an
upper limit of approximately 85% by volume alcohol and that
persons skilled in the art upon reading the specification would
have understood the alcohol content of the present invention to
be approximately 70% to 85% by volume. In re Wertheim, 541 F.2d
at 265, 191 USPQ at 98 (“[T]he invention claimed does not have to
be described in ipsis verbis in order to satisfy the [written]
description requirement of § 112.”)
Accordingly, Rejection 1, with respect to claims 12, 13 and
16 is reversed.
Appeal No. 95-2063
Application 07/965,314
6
B
The examiner urges that the addition of the phrases “not to
exceed 10% by volume of the composition” and “not to exceed 5% by
volume of the composition,” to limit the volume of water present
in the SOG composition, are not supported by the specification as
originally filed and, therefore, constitute the addition of new
matter. Answer, p. 4.
In response the appellant points to the teachings of the
specification wherein (i) three different SOG compositions are
disclosed which comprise a maximum water content of 29.9%, 14.8%
and 8.3%, (specification, p. 4) and (ii) two precise SOG
compositions are disclosed which comprise a water content of 3.4%
and 3.6% (specification, p. 6). Brief, p. 9. According to the
appellant, the claimed water limitations of “less than 5% and
less than 10% are supported by Appellant’s more preferred
embodiment and by the working examples.” Brief, p. 12, last
para. We disagree.
Here, in reviewing the specification, we are unable
to find any factual basis which supports limitations to an SOG
composition having a water content wherein the upper limit is not
to exceed 5%, or 10%, by volume as described in claims 20 through
22. To the contrary, the specification discloses ranges wherein
Appeal No. 95-2063
Application 07/965,314
7
the water content is as high as 14.8% and 29.9% by volume.
Specification, p. 4. We note the description on p. 4 of the
specification that the preferred SOG compositions have a maximum
water content of 8.3% by volume. However, we do not find from
this teachings that those skilled in the art would have
understood that the water content should not exceed 5% by volume,
since 8.3% is greater than the claimed 5%. Nor do we find from
said teaching that those skilled in the art would have understood
that the maximum value could be higher, than 8.3% by volume, but
not greater than 10%. Thus, we do not find that the
specification disclosure conveys, in any manner, that the
appellant was in possession of the now-claimed invention at the
time the application was filed.
Accordingly, Rejection I with respect to claims 20 through
22 is affirmed.
Rejection II
The examiner urges that the claims are incomplete because
“[t]he preamble of claim 12 recites ‘A process for making a
semiconductor device[,]’ yet the claims do not have any positive
processing steps which would result in a semiconductor device.”
(Emphasis in original.) Answer, p. 5. We disagree precisely for
Appeal No. 95-2063
Application 07/965,314
We point out that claim 12, subsection (a) is directed to2
between approximately 15% to 22% by volume of TEOS, and
subsection (b) is directed to between approximately 0.2% to 1.3%
by volume of nitric acid. Thus, volumes of less than 15% and
8
the reasons set forth on p. 11 of the appellant’s brief.
Accordingly, without further elaboration, we adopt the
appellant’s reasoning and position as our own.
The examiner also urges that claim 12, subsection (c) is
inaccurate in the recitation of an upper limit of 85% with
respect to the volume of alcohol. According to the examiner if
85% by volume alcohol is present in combination with the
ingredients required in subsections (a) and (b), the total will
be greater than 100%. It is well settled that claims are not
analyzed in a vacuum but, rather, they should be read in light of
the teachings in the specification and the prior art, as they
would be interpreted by one of ordinary skill in the art. In re
Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (Fed. Cir. 1971).
As discussed we above, one skilled in the art would have
recognized, based on simple mathematics, that exactly 85% by
volume of alcohol could not be used in the claimed process in
combination with the minimal, specified amounts of the additional
ingredients. Moreover, the examiner has overlooked the fact that
the upper limit of alcohol in the claim is approximately 85%. 2
Appeal No. 95-2063
Application 07/965,314
0.2% of TEOS and nitric acid, respectively, are encompassed by
the claim.
9
Thus, the claim does not mandate an upper limit of 85% by volume
of alcohol.
Finally, the examiner urges that the recitation of “‘balance
of water, not to exceed 10% by volume of the composition’ recited
in claim 12 is incorrect.” Answer, p. 5. In addition, the
examiner urges that “in claim 16, the phrase ‘balance water, not
to exceed 5% by volume of the composition’ is proven incorrect.”
Answer, p. 6. It appears that these rejections are a holdover
from rejections made on pp. 5-6 in the first office action,
mailed July 2, 1993 in Paper No. 6. The examiner has overlooked
the appellant’s amendment filed September 13, 1993 in Paper No. 7
wherein these phrases were deleted from the referenced claims.
Since the contested phrases are no longer in claims 12 and 16,
and no other claims have been rejected for these reasons, we
consider this issue to be moot.
Accordingly, Rejection II is reversed.
The decision of the examiner is affirmed-in-part.
Appeal No. 95-2063
Application 07/965,314
10
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
1.136(a).
AFFIRMED-IN-PART
BRADLEY R. GARRIS )
Administrative Patent Judge)
)
)
)
CAMERON WEIFFENBACH ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
JOAN ELLIS )
Administrative Patent Judge)
Appeal No. 95-2063
Application 07/965,314
11
Maurice J. Jones
Motorola, Inc.
505 Barton Springs Rd.
Suite 500
Austin, TX 78704
Appeal No. 95-2063
Application 07/965,314
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JE/jrg
Appeal No. 95-2063
Application 07/965,314
1
APPENDIX
12. A process for making a semiconductor device comprising
the steps of:
providing a spin-on-glass having a composition consisting
essentially of:
a) between approximately 15% to 22% by volume of
tetraethylorthosilicate;
b) an amount of nitric acid equivalent to between
approximately 0.2% to 1.3% by
volume of 70% by weight nitric
acid;
c) between approximately 70% to 85% by volume of
alcohol; and
d) balance water;
providing a semiconductor substrate;
coating the semiconductor substrate with the spin-on-glass;
and heating the coated semiconductor substrate in order
to densify
the spin-on-glass.
13. A process of claim 12 wherein the step of providing a
spin-on-glass comprises providing a spin-on-
glass having between approximately 70% to 85%
by volume of isopropyl alcohol.
16. The process of claim 12 wherein the step of providing a
spin-on-glass further comprises providing a spin- on-glass hav ng
a composition
consisting
essentially of:
a) between approximately 16.8% to 19.0% by volume of
tetraethylorthosilicate;
Appeal No. 95-2063
Application 07/965,314
2
b) an amount of nitric acid equivalent to between
approximately 0.4% to 1.1% by
volume of 70% by weight nitric
acid;
c) between approximately 74.5% to 81.5% by volume of
isopropyl alcohol; and
d) balance water.
20. The process of claim 12 wherein the step of providing a
spin-on-glass comprises providing a spin-on-
glass wherein the water does not exceed 10%
by volume of the spin-on-glass composition.

21. The process of claim 13 wherein the step of providing a
spin-on-glass comprises providing a spin-on-
glass wherein the water does not exceed 5% by
volume of the spin-on-glass composition.
22. The process of claim 16 wherein the step of providing a
spin-on-glass comprises providing a spin-on-
glass wherein the water does not exceed 5% by
volume of the spin-on-glass composition.
APPEAL NO. 95-2063 - JUDGE ELLIS
APPLICATION NO. 07/965,314
APJ ELLIS
APJ WEIFFENBACH
APJ GARRIS
DECISION: AFFIRMED-IN-PART
Typed By: Jenine Gillis
DRAFT TYPED: 20 Aug 97
Revision: 25 Aug 97
Revision: 27 Aug 97
FINAL TYPED: