Ex parte Shinohara

Board of Patent Appeals and Interferences

Oct 19, 2000

08557484 (B.P.A.I. Oct. 19, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of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 MAMORU SHINOHARA
__________
Appeal No. 1998-1097
Application No. 08/557,484
__________
HEARD: Oct. 10, 2000
__________
Before BARRETT, RUGGIERO, and LALL, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claims 1-12, all of the claims pending in the present
application.
Appeal No. 1998-1097
Application No. 08/557,484
2
The claimed invention relates to a circuit arrangement
for reducing noise and eliminating cross-talk in a
semiconductor integrated circuit which includes a MIS (metal-
insulator silicon) capacitor. First and second capacitors are
connected in series between a substrate terminal and the MIS
capacitor, with a power supply connected between the first and
second capacitors. The power supply acts to control the
potential between the first and second capacitors to prevent a
digital signal transmitted to the substrate from entering a
separate circuit connected with the MIS capacitor.
Claim 1 is illustrative of the invention and reads as
follows:
1. A semiconductor circuit comprising:
a substrate terminal;
a first capacitor connected to said substrate terminal;
a second capacitor connected in series to said first
capacitor;
an MIS capacitor connected in series to said second
capacitor;
a connector terminal connected between said first
capacitor and said second capacitor; and
a reference potential-generating source for controlling
said connector terminal to an arbitrary potential connected to
the connector terminal.
Appeal No. 1998-1097
Application No. 08/557,484
A copy of the translation provided by the U.S. Patent &1
Trademark Office, September 1997, is included and relied upon
for this decision.
3
The Examiner relies on the following prior art:
Senuma et al. (Senuma) 5,124,761
Jun. 23, 1992
Miwa et al. (Miwa) 5,414,291 May 09,
1995
(Filed Jan. 31, 1994)
Ito (Published Japanese 4-196583 Jul. 16,
1992
Kokai Patent Application)1
Claims 1, 2, 4, 7, and 8 stand finally rejected under
35 U.S.C. § 102(b) as being anticipated by Senuma. In a
separate rejection, claims 2-8 stand finally rejected under 35
U.S.C.
§ 102(e) as being anticipated by Miwa. Lastly, claims 9-12
stand finally rejected under 35 U.S.C. § 102(b) as being
anticipated by Ito.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Brief and Answer for the
respective details.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the Examiner and the
Appeal No. 1998-1097
Application No. 08/557,484
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evidence of anticipation relied upon by the Examiner as
support for the rejections. We have, likewise, reviewed and
taken into consideration, in reaching our decision,
Appellant’s arguments set forth in the Brief along with the
Examiner’s rationale in support of the rejection and arguments
in rebuttal set forth in the Examiner’s Answer. Only those
arguments actually made by Appellant in the Brief have been
considered in this decision. Arguments which Appellant could
have made but chose not to make in the Brief have not been
considered [see 37 CFR § 1.192(a)].
It is our view, after consideration of the record before
us, that the disclosure of Senuma fully meets the invention as
recited in claim 1, but does not meet the invention as set
forth in claims 2, 4, 7, and 8. We are also of the view that
Miwa does not fully meet the invention as recited in claims 2-
8. Lastly, it is our opinion that Ito fully meets the
invention as recited in claims 9 and 10, but does not meet the
invention as set forth in claims 11 and 12. Accordingly, we
affirm-in-part.
We first consider the rejection of claims 1, 2, 4, 7, and
8 under 35 U.S.C. § 102(b) as being anticipated by Senuma.
Appeal No. 1998-1097
Application No. 08/557,484
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Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as
well as disclosing structure which is capable of performing
the recited functional limitations. 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); W.L.
Gore and Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554,
220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
With respect to independent claim 1, the Examiner has
indicated (Answer, page 4) how the various limitations are
read on the disclosure of Senuma, making particular reference
to Senuma’s illustrations in Figures 5 and 6. In response,
Appellant’s arguments primarily center on the Examiner’s
alleged mischaracterization of Senuma’s capacitances C and Cj1 j2
as corresponding to Appellant’s claimed first and second
capacitors. Appellant contends (Brief, page 4), referring to
Senuma, that “...a review of the specification and the
drawings confirms that items C and C are merely thej1 j2
Appeal No. 1998-1097
Application No. 08/557,484
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intrinsic capacitance present in the device and are not
separate, distinct capacitor elements as claimed.”
After careful review of Appellant’s arguments, it is our
opinion that such arguments are not commensurate with the
scope of claim 1. It is axiomatic that, in proceedings before
the PTO, claims in an application are to be given their
broadest reasonable interpretation consistent with the
specification, and that claim language should be read in light
of the specification as it would be interpreted by one of
ordinary skill in the art. In re Sneed, 710 F.2d 1544, 1548,
218 USPQ 385, 388 (Fed. Cir. 1983). Moreover, limitations are
not to be read into the claims from the specification. In re
Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed.
Cir. 1993) citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989). In our view, even assuming,
arguendo, that “separate and distinct” language would
distinguish over the parasitic junction capacitances C and Cj1 j2
in Senuma, no such language exists in the claims. We further
note that the capacitances 2 and 3 illustrated in Appellant’s
Figure 1, which correspond to the claimed first and second
capacitors in appealed claim 1, are described at page 13,
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Application No. 08/557,484
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lines 16-20 of Appellant’s specification as parasitic junction
capacitances. In view of the above, since all of the
limitations of independent claim 1 are disclosed by Senuma,
the Examiner’s
35 U.S.C. § 102(b) rejection of claim 1 is sustained.
Turning to a consideration of the Examiner’s 35 U.S.C.
§ 102(b) rejection of independent claim 2 based on Senuma, we
note that, while we found Appellant’s arguments to be
unpersuasive with respect to appealed claim 1, we reach the
opposite conclusion with respect to claim 2. Appellant’s
argument (Brief, page 4), with which we agree, is that,
contrary to the express claim language, Senuma’s bottom
electrode, identified as element 34 by the Examiner, is not
“formed over” Senuma’s second layer 35. While we do not
dispute the Examiner’s contention that the term “over” is
subject to possible varying interpretations when considering
the structural orientation of an applied reference, we can
conceive of no orientation of the disclosed structure of
Senuma, and the Examiner has pointed to none, which would meet
all of the limitations of appealed claim 2. Accordingly, we
do not sustain the Examiner’s 35 U.S.C.
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Application No. 08/557,484
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§ 102(b) rejection of independent claim 2, nor of rejected
claims 4, 7, and 8 dependent thereon, based on Senuma.

Our next consideration is the Examiner’s 35 U.S.C. §
102(e) rejection of claims 2-8 based on Miwa. With respect to
independent claim 2, the Examiner has attempted (Answer, page
4) to read the various limitations on Miwa, making particular
reference to the illustration in Figure 12 of Miwa.
Appellant’s primary argument in response asserts that element
199 in Miwa, identified by the Examiner as corresponding to
the claimed “potential control electrode,” is not in fact
electrically connected with the first layer to control the
first layer to be at an arbitrary potential as claimed.
After careful review of the Miwa reference in light of
the arguments of record, we are in agreement with Appellant’s
position as stated in the Brief. While we do not dispute the
Examiner’s contention that Miwa’s NPN transistor T wouldr
require connection to a source of potential for proper
operation, such a generalized statement does not address the
particulars of the language of appealed claim 2. A review of
the semiconductor structure illustrated in Figure 12 of Miwa
Appeal No. 1998-1097
Application No. 08/557,484
The recitations of “the first dielectric film” at lines2
6 and 7 of claims 9 and 11, respectively, lack clear
antecedent reference since earlier recitations in claims 9 and
11 set forth “a first dielectric layer.”
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reveals a clear demarcation between the NPN transistor and the
MISC capacitor. Absent any illuminating disclosure in Miwa,
which the Examiner has not pointed to, we fail to see any
support for the Examiner’s conclusion that connection of
Miwa’s NPN transistor to a potential source would control a
first layer associated with the MISC capacitor to an arbitrary
potential as required by the language of appealed claim 2.
Therefore, since all of the limitations are not disclosed by
Miwa, the Examiner’s 35 U.S.C.
§ 102(b) rejection of independent claim 2, as well as claims
3-8 dependent thereon, is not sustained.
Lastly, we turn to a consideration of the Examiner’s
35 U.S.C. § 102(b) rejection of claims 9-12 based on Ito. 2
With respect to independent claim 9, the Examiner has
indicated (Answer, page 5) how the various limitations are
read on the disclosure of Ito, in particular the illustration
in Ito’s Figure 4. In response, Appellant’s sole argument in
the Brief asserts the lack of disclosure in Ito of a doped
Appeal No. 1998-1097
Application No. 08/557,484
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region in an epitaxial layer connected to a third opening. We
do not agree. As pointed out by the Examiner (Answer, pages 5
and 8), the right-most opening in Ito’s Figure 4 extends
through the second and third dielectrics (12 and 15,
respectively) to the doped region N (P ) in epitaxial layer 19+ +
formed in substrate 18.
With respect to dependent claim 10, we also agree with
the Examiner that the generated input voltages V and V1 2
(discussed at page 4 of the English translation of Ito) in
connection with the adder circuit illustrated in Figure 5
clearly suggest an inherent connection to a power supply.
Accordingly, since all of the claimed limitations are
disclosed by Ito, the Examiner’s
35 U.S.C. § 102(b) rejection of claims 9 and 10 is sustained.
After considering the entirety of the Appellant’s
comments with respect to Ito, however, we find Appellant’s
arguments to be persuasive with respect to independent claim
11. We note that the limitations of claim 11 read on
Appellant’s Figure 4 embodiment in which a second doped region
(identified as element 14 in Appellant’s Figure 4) is formed
in a first doped region (element 34 which is silicon doped
Appeal No. 1998-1097
Application No. 08/557,484
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with an n-type material), with the first doped region formed
in an SiO layer (32) which in turn is formed on a silicon2
substrate (31). Like Appellants, we do not find such a
configuration in Ito. While it appears from the illustration
in Figure 4 that, as asserted by the Examiner, Ito shows two
doped regions 18 and 19, we find no disclosure in Ito of the
formation of the first doped layer in the SiO layer as2
required by claim 11. Therefore, since all of the claimed
limitations are not disclosed by Ito, the Examiner’s 35 U.S.C.
§ 102(b) rejection of claims 11 and 12 is not sustained.
In summary, with respect to the Examiner’s 35 U.S.C.
§ 102(b) rejection based on Senuma, we have sustained the
rejection of claim 1, but have not sustained the rejection of
claims 2, 4, 7, and 8. We have not sustained the Examiner’s
35 U.S.C. § 102(e) rejection of claims 2-8 based on Miwa.
Lastly, with respect to the Examiner’s 35 U.S.C. § 102(b)
rejection based on Ito, we have sustained the rejection of
claims 9 and 10, but have not sustained the rejection of
claims 11 and 12. Therefore, the Examiner’s decision
rejecting claims 1-12 is affirmed-in-part.
Appeal No. 1998-1097
Application No. 08/557,484
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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
Lee E. Barrett )
Administrative Patent Judge )
)
)
)
Joseph F. Ruggiero ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Parshotam S. Lall )
Administrative Patent Judge )
JFR:tdl
Appeal No. 1998-1097
Application No. 08/557,484
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