Ex parte Ozaki

Board of Patent Appeals and Interferences

Jan 30, 1998

07545786 (B.P.A.I. Jan. 30, 1998)

Application for patent filed June 29, 1990.1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 38
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HIDEYUKI OZAKI

_____________
Appeal No. 95-3678
Application 07/545,7861
______________
HEARD: December 11, 1997
_______________
Before THOMAS, JERRY SMITH and TORCZON, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's final rejection of claims 1, 11, 13 and 14.
Appeal No. 95-3678
Application 07/545,786
2
Claims 5, 6 and 12 have been cancelled. The final rejection
noted that “[c]laims 2-4, 7-10 and 15 remain withdrawn from
further consideration as having already been decided by the
Board, Res Judicata” [page 5]. The brief indicates that the
appeal is taken with respect to claims 1-4, 7-11 and 13-15 [page
1], whereas the answer indicates that the appeal only involves
claims 1, 11, 13 and 14 since “[C]laims 2-4, 7-10 and 15 have
already been decided by the Board in their previous decision”
[answer, page 1].
The examiner’s withdrawal of claims 2-4, 7-10 and 15 from
the appeal on the ground of Res Judicata was improper. Res
Judicata is a ground of rejection which is subject to review by
the Board of Patent Appeals and Interferences. Thus, the
examiner’s final rejection is tantamount to rejecting claims 2-4,
7-10 and 15 on the ground of Res Judicata, and we will treat
these claims as having been so rejected. Accordingly, this
appeal is directed to the rejection of claims 1-4, 7-11 and 13-15
as argued by appellant.
The claimed invention pertains to a method and apparatus
for controlling a semiconductor memory device. More
particularly, the invention is directed to the setting of circuit
means for manipulating the data to an active or inactive state
Appeal No. 95-3678
Application 07/545,786
3
based upon a signal applied to a respective input/output
terminal.

Representative claim 1 is reproduced as follows:
1. A semiconductor memory device for storing data
comprising plural bits comprising:
a plurality of terminals (I/01 to I/04) for respectively
inputting or outputting said data comprising plural bits to
corresponding respective groups of memory cells,
a plurality of circuit means (31 to 34) for manipulating
data, said circuit means provided in respective correspondence to
said plural terminals (I/01 to I/04) and said groups of memory
cells, and
setting means (81 to 84; 91 to 94) for fixedly setting
one of said plurality of circuit means (31 to 34) corresponding
to one of said plurality of terminals to an inactive state while
at least another one of said plurality of circuit means
corresponding to another of said plurality of terminals remains
in an active state,
wherein said setting means is responsive to application
of a deactivating signal to said one of said terminals by setting
the circuit means respectively corresponding thereto to an
inactive state,
wherein said deactivating signal comprises a high voltage
applied by a high voltage generating circuit, said high voltage
being higher than a predetermined range of an operating voltage.
The examiner relies on the following references:
Kawashima et al. (Kawashima) 4,744,058 May 10, 1988
Shinoda et al. (Shinoda) 4,839,860 June 13, 1989
S. M. Sze, Physics of Semiconductor Devices, Copyright 1981 by
John Wiley & Sons, Inc., pages 500-504.

Appeal No. 95-3678
Application 07/545,786
4
We note that the claims of this application have been the
subject of a previous appeal. In the previous appeal, claims 6,
13 and 14 were rejected under 35 U.S.C. § 112, first and second
paragraphs, and claims 1-15 were rejected under 35 U.S.C. § 103
as being unpatentable over a patent to Pinkham and Shinoda, cited
above. The previous Board decision reversed the rejections of
claims 6, 13 and 14 under Section 112 [Paper #31]. The previous
Board decision also affirmed the prior art rejection with respect
to claims 1-5, 7-11 and 15, but reversed the prior art rejection
with respect to claims 6 and 12-14. However, the Board entered a
new ground of rejection against claims 6 and 12-14 under 35
U.S.C. § 103 based upon the teachings of Sze and Shinoda.
Following the Board decision, an amendment was filed on August
27, 1993 to cancel claims 5, 6 and 12, to amend claims 1-4, 7-11
and 13-15, and to add claims 16-20. This amendment was denied
entry because it was not limited to the claims subject to the new
ground of rejection made by the Board. Subsequently, another
amendment was filed in which claims 5, 6 and 12 were cancelled
and only claims 1, 11, 13 and 14 were amended. This amendment
has been entered. Claim 1 now incorporates the limitations of
cancelled claims 5 and 6. Claim 11 now includes the limitations
of cancelled claim 12. Claim 13 was rewritten to be in
Appeal No. 95-3678
Application 07/545,786
5
independent form, and claim 14 depends from rewritten claim 13.
Claims 2-4 and 7-9 depend from newly amended claim 1. Claims 10
and 15 remain unchanged from the claims considered in the
previous Board decision.
Claims 2-4, 7-10 and 15 effectively stand rejected on the
ground of Res Judicata [note discussion supra]. Claims 1, 11, 13
and 14 stand rejected under 35 U.S.C. § 103. As evidence of
obviousness the examiner offers Sze in view of Shinoda and
Kawashima.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
obviousness rejection. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner's
rationale in support of the rejections and arguments in rebuttal
set forth in the examiner's answer.
Appeal No. 95-3678
Application 07/545,786
6
It is our view, after consideration of the record before
us, that claims 2-4 and 7-9 have been improperly rejected on the
ground of Res Judicata, although claims 10 and 15 are properly
rejected on this ground. We are also of the view that the
collective evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 1, 11, 13 and 14. Accordingly, we affirm-in-part.
We consider first the rejection of claims 1, 11, 13 and
14 under 35 U.S.C. § 103 as being unpatentable over the teachings
of Sze in view of Shinoda and Kawashima. As we noted above,
these claims now contain limitations which compelled the Board in
the previous decision to reverse the rejection of these claims
based on Pinkham and Shinoda, and led the Board to make a new
rejection based on Sze and Shinoda. The examiner has applied Sze
and Shinoda in exactly the same manner as the Board did in the
previous decision and has added Kawashima to allegedly meet the
additional recitations of the claims added by amendment after the
previous Board decision. Appellant argues that the claims have
not been properly interpreted under the last paragraph of 35
U.S.C. § 112 as required by the decision in In re Donaldson, 16
F.3d 1189, 29 USPQ2d 1845, and that when interpreted in the
Appeal No. 95-3678
Application 07/545,786
7
correct manner, the invention of claims 1, 11, 13 and 14 is not
suggested by the applied references.
Although the examiner has argued that the Board
considered Donaldson issues in the previous decision, the record
in this case does not support this assertion. The court decision
in Donaldson was rendered after the Board had rendered its
previous decision in this case, and the Board decision does not
make any reference whatsoever to the interpretation of the claims
in accordance with claims drafted in means plus function form.
Although claims drafted in means plus function format were
always interpreted in light of the specification as set forth in
the last paragraph of 35 U.S.C. § 112, Donaldson clarified the
meaning of the statutory language and how it was to be
implemented during the prosecution of applications before the
Patent and Trademark Office (PTO). There is no evidence in this
case that the claim interpretations mandated by Donaldson have
ever been considered by the PTO. On this record, it appears to
us that the following two questions must still be answered: (1)
what structure should be read into the claims corresponding to
the claimed means plus function elements? and (2) does the
applied prior art suggest the obviousness of this structure?
Appeal No. 95-3678
Application 07/545,786
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Each of independent claims 1, 11 and 13 recites a
plurality of circuit means, different from the memory cells per
se, which can individually be set to an inactive state based on a
deactivating signal. Appellant has presented a convincing
argument as to why this circuit means of claims 1, 11 and 13
cannot be met by the state of the memory cells in any of the
applied prior art references. The examiner has failed to respond
as to how the applied prior art can be interpreted to meet the
invention of claims 1, 11 and 13 when they are given the
interpretation mandated by the last paragraph of 35 U.S.C. § 112
and Donaldson. The examiner’s response is to simply conclude
that “the Board is felt to have adequately considered such issues
as the ’equivalency of means’ in their previous Decision [Answer,
page 3]. For reasons we have discussed above, the issue of claim
interpretation under 35 U.S.C. § 112 and Donaldson has been
properly raised by appellant but has not been considered by the
PTO on this record. The examiner is required to make factual
showings in response to properly raised Donaldson questions as to
how the applied prior art teaches the structure of claimed means
or an equivalent thereof. The examiner has made no such factual
showings in this case.
Appeal No. 95-3678
Application 07/545,786
9
Appellant’s arguments regarding the proper interpretation
of the claims stand essentially unrebutted by the examiner, and
we find these unrebutted arguments to be logical, accurate and
persuasive. Thus, the invention of claims 1, 11, 13 and 14
should be construed in the manner argued by appellant. Such
claim construction has not been considered by the examiner on
this record. Since we are of the view that the subject matter of
amended claims 1, 11, 13 and 14, when properly interpreted, is
directed to an invention which has not been shown to be suggested
by the collective teachings of Sze, Shinoda and Kawashima, we
conclude that the examiner has failed to support his position
that this subject matter would have been obvious to the artisan
in view of the applied prior art. Therefore, we do not sustain
the rejection of claims 1, 11, 13 and 14 as formulated by the
examiner.
We now consider the implicit rejection of claims 2-4, 7-
10 and 15 on the ground of Res Judicata. Claims 2-4 and 7-9
depend from claim 1 which was amended after the previous Board
decision. The amendment of claim 1 added limitations which were
not present in the claims considered by the Board in the previous
decision. Thus, claims 2-4 and 7-9 are directed to an invention
which was not considered by the Board in the previous decision.
Appeal No. 95-3678
Application 07/545,786
10
Res Judicata is applicable only when there are no new
issues of fact or law to be resolved. Appellant specifically
amended previously appealed claim 1 in response to a new ground
of rejection made in the previous Board decision. Thus, claim 1
which is now on appeal before us, is not the same claim that was
considered in the previous Board decision. Therefore, it is
improper to hold that the patentability of claims 2-4 and 7-9,
which depend from amended claim 1, is precluded by Res Judicata.
See, for example, In re Craig, 411, F.2d 1333, 162 USPQ 157 (CCPA
1969). Therefore, since factual and legal considerations
affecting the patentability of claims 2-4 and 7-9 have changed
since the previous decision of the Board of Patent Appeals and
Interferences, the failure to consider these claims based on the
ground of Res Judicata was in error. To the extent that we have
considered the examiner’s withdrawal of these claims to be a
rejection on the ground of Res Judicata, such rejection is
reversed.
With respect to claims 10 and 15, these are the same
claims that were considered by the Board in the previous
decision. Appellant has made no arguments directed to the
impropriety of the rejection on Res Judicata as it applies to
these claims. Appellant has limited his arguments on this issue
Appeal No. 95-3678
Application 07/545,786
Claim 7 depends from canceled claim 5. Appellant has2
indicated a willingness to change its dependency to claim 1.
(Paper 32 at 3, not entered.) Appellant may change the
dependency accordingly, pursuant to 37 CFR § 1.196(c).
11
to the dependent claims [brief, page 22]. Appellant’s
representative at oral hearing confirmed that the arguments on
this issue did not include unamended claims 10 and 15. Since
claims 10 and 15 are the exact same claims that were considered
by the Board in its previous decision, and since appellant has
identified no new questions of fact or law which are applicable
to these claims, we sustain the rejection on Res Judicata as it
applies to claims 10 and 15.
In summary, we have not sustained the examiner’s position
on Res Judicata with respect to claims 2-4 and 7-9, but we have
sustained this rejection with respect to claims 10 and 15. We
also have not sustained the examiner’s rejection of claims 1, 11,
13 and 14 under 35 U.S.C. § 103. Accordingly, the decision of
the examiner rejecting claims 1-4, 7 -11 and 13-15 is affirmed-2
in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
Appeal No. 95-3678
Application 07/545,786
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§ 1.136(a).
AFFIRMED-IN-PART
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Appeal No. 95-3678
Application 07/545,786
13
TORCZON, Administrative Patent Judge, concurring in result.
I do not agree that we can treat the withdrawn claims as
rejected. In the interest of administrative economy, however, I
would reach exactly the same result as the majority based on the
instructions provided in the previous Board decision. (Paper 31
at 11.)
)
RICHARD TORCZON ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
Appeal No. 95-3678
Application 07/545,786
14
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