Ex parte ROUNTREE et al.

Board of Patent Appeals and Interferences

Jul 16, 1998

08109203 (B.P.A.I. Jul. 16, 1998)

Application for patent filed August 19, 1993. According1
to appellants, the application is a continuation of Applica-
tion 07/977,730, filed November 16, 1992, abandoned; which is
a con- tinuation of Application 07/767,737, filed September
30, 1991, abandoned.
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(2) is not binding precedent of the Board.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. 42
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROBERT ROUNTREE,
CHARVAKA DUVVURY
and
TATSUROH MAKI
_____________
Appeal No. 95-3592
Application 08/109,2031
______________
ON BRIEF
_______________
Appeal No. 95-3592
Application 08/109,203
2
Before THOMAS, FLEMING and LEE, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejec-
tion of claims 1 through 4, 6 through 10, 17 through 19 and 21
through 23. Claims 5, 20 and 24 are objected to as being
dependent upon a rejected base claim, but would be allowable
over the prior art of record if rewritten in independent form
including all of the limitations of the base claim and any
intervening claims.
Appellants' invention relates to an input protection
circuitry for sensitive electrical devices such as integrated
circuitry. In particular, Appellants disclose on page 6 of
the specification that Figure 2 shows an embodiment of the
invention, an N-well isolation resistor 10, having heavily
doped N+ regions 16 and 18 formed within N-well 14 with region
16 being laterally spaced from region 18. Region 16 is elec-
trically connected to an input bond pad 20. Region 18 is
connected to a circuit structure 21 that is to be protected.
Appeal No. 95-3592
Application 08/109,203
3
On page 7 of the specification, Appellants disclose that the
N-well isolation resistor 10 increases in resistance with an
increase in voltage to limit the amount of current supplied to
the protected circuit structure 21.
Independent claim 1 is reproduced as follows:
1. An isolation stage device for protecting a
circuit structure against over-voltage conditions, comprising:
a lightly doped region having a first conductivity
type formed in a lightly doped substrate having a second
conductivity type;
a first heavily doped region formed at least par-
tially in said lightly doped region having said first conduc-
tivity type, said first heavily doped region being electri-
cally connected to a first input node;
a second heavily doped region formed at least par-
tially in said lightly doped region having said first conduc-
tivity type, said second heavily doped region being electri-
cally connected to said circuit structure; and
a resistive means being electrically connected
between said first heavily doped region and said second
heavily doped region having a resistance responsive to the
voltage between said first heavily doped region and said
second heavily doped region.
The reference relied on by the Examiner is as
follows:
Shirato et al. (Shirato) 4,710,791 Dec. 1,
1987
Appeal No. 95-3592
Application 08/109,203
Appellants filed an appeal brief on August 29, 1994. We2
will refer to this appeal brief as simply the brief.
Appellants filed a reply appeal brief on October 24, 1994. We
will refer to this reply appeal brief as the reply brief. The
Examiner responded to the reply brief in a supplemental
Examiner's answer, mailed January 9, 1995, thereby entering
the reply brief. Appellants filed a supplemental reply appeal
brief on March 13, 1995. We will refer to this supplemental
reply appeal brief as the supplemental reply brief. The
Examiner stated in the Examiner’s letter dated June 2, 1995
that the reply brief has

been entered and considered but no further response by the
Examiner is deemed necessary.
The Examiner responded to the brief with an Examiner's3
answer, mailed September 19, 1994. We will refer to the
Examiner's answer as simply the answer. The Examiner
responded to the reply brief with a supplemental Examiner's
answer mailed January 9, 1995. We will refer to the
Supplemental Examiner's answer as simply the supplemental
answer.
4
Claims 1 through 4, 6 through 10, 17 through 19 and
21 through 23 stand rejected under 35 U.S.C. § 102 as being
anticipated by Shirato or in the alternative under 35 U.S.C. §
103 as being unpatentable over Shirato.
Rather than repeat the arguments of Appellants or
the Examiner, we make reference to the briefs and the2
answers for the respective details thereof.3
Appeal No. 95-3592
Application 08/109,203
5
OPINION
After a careful review of the evidence before us, we
agree with the Examiner that claims 1 through 4, 6 through 10,
17 through 19 and 21 through 23 are anticipated under 35
U.S.C.
§ 102 by Shirato.
At the outset, we note that Appellants have
indicated on page 3 of the brief that the claims stand
separately. However, we note that Appellants have argued the
claims in the briefs as one group. As per 37 CFR §
1.192(c)(5) revised
Oct. 22, 1993 which was controlling at the time of Appellants
filing the brief, it will be presumed that the rejected claims
stand or fall together unless there is a statement otherwise,
and in the appropriate part or parts of the arguments
Appellants
present reasons as to why Appellants consider the rejected
claims to be separately patentable. We note that on pages 7
through 9, Appellants provide a paragraph for each of claims 2
through 4, 6 through 10, 17 through 19 and 21 through 23.
Appeal No. 95-3592
Application 08/109,203
6
Each paragraph provides a summary sentence restating the claim
limitations followed by an identical sentence of argument.
The identical sentence of argument is as follows: The Shirato
reference fails to teach or suggest this further limitation in
combination with the requirements of claim 1 [for claims 2
through 4, 6 through 10, 17 through 19] or claim 21 [for
claims 22 through 23]. Appellants have not presented how the
Examiner erred or reasons why Shirato does not teach or
suggest the claimed invention. We will, thereby, consider the
Appellants' claims as standing or falling together.
It is axiomatic that anticipation of a claim under
§ 102 can be found only if the prior art reference discloses
every element of the claim. See In re King, 801 F.2d 1324,
1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d
1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984). "Anticipation
is established
only when a single prior art reference discloses, expressly or
under principles of inherency, each and every element of a
Appeal No. 95-3592
Application 08/109,203
7
claimed invention." RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.),
cert.
dismissed, 468 U.S. 1228 (1984), citing Kalman v. Kimberly-
Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir.
1983), cert. denied, 465 U.S. 1026 (1984).
Appellants argue in the brief, reply brief and
supplemental reply brief that Shirato does not teach a
resistive means having a resistance responsive to the voltage.
We note that Appellants' claim 1 recites "a resistive means
being electrically connected between said first heavily doped
region and said second heavily doped region having a
resistance responsive to the voltage between said first
heavily doped region and said second heavily doped region."
The Examiner argues that Shirato teaches Appellants'
claimed resistive means. The Examiner shows that Shirato's
element 26 of a cross sectional view of a protection device in
Figure 1(a) is a resistive means being electrically connected
between said first heavily doped region and said second
Appeal No. 95-3592
Application 08/109,203
8
heavily doped region having a resistance responsive to the
voltage between said first heavily doped region and said
second heavily doped region as recited in Appellants' claims.
We note that
Shirato teaches an equivalent electrical circuit to the
protection device of Figure 1(c). Shirato teaches in column
4,
lines 27-35, that resistor Rw shown in Figure 1(c) is the
resistance of element 22 shown in Figure 1(a) and resistor Rp
shown in Figure 1(c) is the resistance of element 26 shown in
Figure 1(a).
Appellants argue that Shirato's resistive means,
element 26 shown in Figure 1(a) and resistor Rw shown in
Figure 1(c), does not read on Appellants' claimed resistive
means. Appellants argue that because only a small amount of
current flows through element 26 with the majority of current
flowing through another resistance means, element 26 in Figure
1(a) and resistor Rp shown in Figure 1(c), Shirato's resistive
means, element 26, offers no practical benefit as a resistor.
Appeal No. 95-3592
Application 08/109,203
9
However, we fail to find that the scope of
Appellants' claim requires that the resistive means carry all
of the current or preclude other resistive means. Our
reviewing court states in In re Zletz, 893 F.2d 319, 321, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989) that "claims must be
interpreted as broadly as their terms reasonably allow." We
note that Appellants' claims recite "comprising" and thereby
Appellants' claims do not preclude other resistive means. In
addition, we fail to find any limitations in the claims that
require a value of resistance or amount of the current that is
to flow through the resistive means.
Appellants further argue that the Examiner is
required to consider the function language "having a
resistance responsive to the voltage." We note that
Appellants and Examiner have argued this issue in the briefs
and answers at considerable
length and detail. We find that the Examiner has shown that
Shirato does teach resistive means 26 which has a resistance
responsive to the voltage. We note that Appellants' broad
claim language does not preclude a reading that a resistance
Appeal No. 95-3592
Application 08/109,203
10
of a constant value to a range of voltages is a resistance
responsive to the range of voltages. We note that the claim
language recites only “having a resistance responsive to the
voltage.” We further note that Shirato’s resistive means has
a resistance responsive to the voltage in that the current
varies according to the voltage divided by the resistance.
Appellants’ claims do not require that the resistance varies
with voltage change.
In the supplemental reply brief, Appellants argue
that our reviewing court in In re Donaldson Co. Inc., 16 F.3d
1189,
29 USPQ2d 1845 (Fed. Cir. 1994) held that function language
alone was determinative of patentability. However, we note
that Appellants did not argue that Appellants' resistive means
must be construed to corresponding structure found in
Appellants' specification. Furthermore, Appellants do not
point to corresponding structure in Appellants' specification.
Thus, we find that the Examiner properly interpreted the scope
of Appellants' claims.
Appeal No. 95-3592
Application 08/109,203
11
Therefore, we find that Shirato teaches a resistive means
being electrically connected between said first heavily doped
region
and said second heavily doped region having a resistance
responsive to the voltage between said first heavily doped
region and said second heavily doped region as recited in
Appellants’ claims.
We note that Appellants have not argued that Shirato
has failed to meet any of the other limitations of the claims.
Appellants have chosen not to argue any of these specific
limitations of the claims as a basis for patentability. We
are not required to raise and/or consider such issues. As
stated by our reviewing court in In re Baxter Travenol Labs.,
952 F.2d 388, 391, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991),
“[i]t is not the function of this court to examine the claims
in greater detail than argued by an appellant.” 37 CFR §
1.192(a) as amended at 58 F.R. 54510, Oct. 22, 1993, which was
controlling at the time of Appellants' filing the brief,
states as follows:
The brief . . . must set forth the
authorities and arguments on which the
Appeal No. 95-3592
Application 08/109,203
12
appellant will rely to maintain the appeal.
Any arguments or authorities not included
in the brief may be refused consideration
by the Board of Patent Appeals and
Interferences.
Also, 37 CFR § 1.192(c)(6)(iii) states:
For each rejection under 35 U.S.C. 102, the
argument shall specify the errors in the
rejection and why the rejected claims are
patentable under 35 U.S.C. 102, including
any specific limitations in the rejected
claims which are not described in the prior
art relied upon in the rejection.
Thus, 37 CFR § 1.192 provides that just as the court is not
under any burden to raise and/or consider such issues, this
board is not under any greater burden.
In view of the foregoing, the decision of the
Examiner rejecting claims 1 through 4, 6 through 10, 17
through 19 and 21 through 23 under 35 U.S.C. § 102 as being
anticipated by Shirato or in the alternative under 35 U.S.C. §
103 as being unpatentable over Shirato is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
Appeal No. 95-3592
Application 08/109,203
13
§ 1.136(a).
AFFIRMED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
JAMESON LEE )
Administrative Patent Judge )
Texas Instruments Incorporated
P.O. Box 655474 M/S 219
Dallas, TX 75265