Ex Parte Stamper

Patent Trial and Appeal Board

Feb 27, 2017

12612160 (P.T.A.B. Feb. 27, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/612,160 11/04/2009 Anthony K. STAMPER BUR920080417US1 3869
44152 7590 03/01/2017
Roberts Mlntknwski Safran Pole Rr PalHernn P P
EXAMINER
Intellectual Property Department
P.O. Box 10064
GRAYBILL, DAVID E
MCLEAN, VA 22102-8064 ART UNIT PAPER NUMBER
2894
NOTIFICATION DATE DELIVERY MODE
03/01/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@rmsc2.com
lgallaugher@rmsc2.com
dbeltran @ rmsc2. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY K. STAMPER
Appeal 2016-002615
Application 12/612J601
Technology Center 2800
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellant filed an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1—17, 22, and 23. We have jurisdiction under
35 U.S.C. § 6(b).2
We AFFIRM.
The subject matter on appeal relates to methods of manufacturing a structure
for an integrated circuit (see, e.g., claims 1 and 12 and Spec. 11). Appellant
1 According to Appellant, the real party in interest is International Business
Machines Corporation. Appeal Br. 2.
2 Our decision refers to the Appellant’s Specification filed Aug. 21, 2012 (Spec.),
the Appeal Brief filed Aug. 3, 2015 (Appeal Br.), the Examiner’s Answer received
Nov. 6, 2015 (Ans.), and the Reply Brief filed Jan. 5, 2016 (Reply Br.).
Appeal 2016-002615
Application 12/612,160
discloses that electromigration generally limits the reliability of interconnections in
microelectronic circuits. Spec. 12. Electromigration occurs via two mechanisms.
Id. at 13. In the first mechanism, atoms of a primary conductor electromigrate
away from a region more quickly than other atoms can replace them, which
generates voids. Id. As a void grows, the electrical resistance of the
interconnection increases until failure of a circuit occurs. Id. In the second
mechanism, metal atoms electromigrate to a region faster than metal atoms leave
the region. Id. This causes an interconnect to grow and extend to an adjacent
interconnection, which causes an electrical short circuit. Id. As microelectronic
circuits are made denser to improve performance, electric fields and current
densities of interconnects increase in the circuits, which in turn increases the rate
of electromigration. Id. at 12.
Appellant states a “short-length effect” occurs in short length wires, which
experience a dramatic increase in electromigration lifetime due to a back pressure
created by the generation of primary conductor vacancies. Id. at | 5. The short-
length effect happens in short interconnections if the electrical current is supplied
through a lead having a low diffusivity. Id. Specifically, a backstress builds up in
the lead as atoms of the lead material pile up against a diffusion barrier. Id. The
backstress counteracts the driving force for electromigration, which can result in a
steady-state condition where the backstress balances with the driving force for
causing electromigration. Id.
Appellant further states:
The existence of the short-length effect has been demonstrated
previously and is not a new phenomenon. However, the design of short
interconnect wires is not a trivial task. For example, current technology
includes fabricating complex interconnect structures that include jogs
and other complex shapes, which add to the length of the interconnect
between wires as well as processing costs. The complex shapes include
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the formation of vias extending entirely through a dielectric layer to
underlying wiring and additional wiring that connects the vias together.
The formation of the vias and the additional wires is a complex
fabrication process that includes etching vias and trenches using, for
example, damascene processes, then deposition of metal in vias and
trenches within the dielectric. These complex shapes also have to be
carefully designed to ensure that they do not interfere with other devices
on the integrated circuit.
Id. 1 6. In view of this, Appellant states there is a need to overcome the
deficiencies discussed above. Id. 17.
Independent claim 1 is illustrative and is reproduced below from the Claims
Appendix of the Appeal Brief.3 The limitations at issue are italicized.
1. A method of manufacturing a structure, comprising:
breaking of a single wiring into adjacent short length wires which
are below a maximum length, the adjacent short length wires being in
a same wiring level of an integrated circuit;
forming a conductive strap which overlaps and is in contact with
the adjacent short length wires, wherein the overlap between the
conductive strap and the adjacent short length wires satisfies a
minimum ground rule for a particular node according to technology
ground rules for the structure; and
forming metal studs in a dielectric material, wherein:
the conductive strap and the metal studs are formed
concurrently using a dual damascene process;
trenches for the conductive strap and the metal studs are
formed in two etching processes;
the metal studs are formed below the conductive strap; and
the metal studs and the conductive strap are separated from
one another in the dielectric material.
The claims on appeal stand rejected as follows:4
(1) claims 1—17, 22, and 23 under 35 U.S.C. § 112, second paragraph, as
3 Appeal Br. Claims Appendix 32.
4 The § 103(a) rejection of claims 1—17, 22, and 23 over Chen in view of US
2009/0278173 A1 and/or US 2008/0077898 A1 and/or US 2004/0115963 A1
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being indefinite;
(2) claims 1—17, 22, and 23 under 35 U.S.C. § 112 as failing to comply
with the written description requirement;* * 5
(3) claims 1—17, 22, and 23 under 35 U.S.C. § 112 as failing to comply
with the enablement requirement;
(4) claims 1, 9, and 10 under 35 U.S.C. § 102(b) as being clearly
anticipated by Chen;6
(5) claims 1—17, 22, and 23 under 35 U.S.C. § 103(a) as being
unpatentable over Chen; and
(6) claims 1—17, 22, and 23 under 35 U.S.C. § 103(a) as being
unpatentable over Chen in view of Marple.7
B. DISCUSSION
Indefiniteness Rejections
Claims 1—17, 22, and 23 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
and/or US 6,701,289 B1 and/or US 6,574,786 B1 and/or US 6,305,000 B1 and/or
US 5,953,518 has been withdrawn. Ans. 2.
5 Appellant contends the language “the stud connectors are shorter than the metal
studs and avoid electrical shorts” in claim 22 complies with the written description
requirement. Appeal Br. 10—12. Claim 22 was rejected for failing to comply with
the written description requirement at page 10 of the Final Office Action mailed
March 31, 2015. The Examiner responds by stating “there is no such assertion in
the examiner’s answer.” Ans. 32. Therefore, we understand the Examiner’s
position as the § 112, first paragraph, rejection of claim 22 for failing to comply
with the written description requirement as being withdrawn.
6 Chen, US 2006/0284214 Al, published Dec. 21, 2006 (“Chen”).
7 Marple, US 2003/0009728 Al, published Jan. 9, 2003 (“Marple”).
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The second paragraph of 35 U.S.C. § 112 requires the specification to
“conclude with one or more claims particularly pointing out and distinctly claiming
the subject matter which the applicant regards as his invention.”
35 U.S.C. § 112, second paragraph (2006). The second paragraph of § 112
contains two requirements: first, the claim must set forth what the applicant
regards as the invention, and second, it must do so with sufficient particularity and
distinctness, i.e., the claim must be sufficiently definite. Allen Eng’g Corp. v.
Bartell Indus., 299 F.3d 1336, 1348 (Fed. Cir. 2002).
“As the statutory language of ‘particularity]’ and ‘distinctness]’ indicates,
claims are required to be cast in clear—as opposed to ambiguous, vague,
indefinite—terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). Exact
precision is not required. The test for determining the question of indefmiteness
may be formulated as whether the claims “set out and circumscribe a particular
area with a reasonable degree of precision and particularity.” In re Moore, 439
F.2d 1232, 1235 (CCPA 1971). With regard to the reasonableness standard, one
must consider the language in the context of the circumstances. Packard, 751 F.3d
at 1313. Language is an imprecise method of drawing boundaries delineating
patent rights, thus unreasonable precision cannot be demanded. Id. On the other
hand, the claims must notify the public of what they are excluded from making and
using. Id. For this reason, an applicant is required to use language as precise as
the subject matter reasonably permits. Id.
In order to determine if the claims set out and circumscribe a particular area
with a reasonable degree of precision and particularity, we analyze the language of
the claim “in light of the teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the ordinary level of skill in
the pertinent art.” Moore, 439 F.2d at 1235. Precision in claiming is not only
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dependent on the claim language itself; it is dependent on the description of the
invention in the Specification. Although claims are not to be limited to specific
embodiments set forth in the specification when it does not appear that an applicant
desired the claims to be so limited, the specification is the single best guide to
determining the meaning of the claim terms. Phillips v. AWH Corp., 415 F.3d
1303, 1315 (Fed. Cir. 2005) (en banc). Claims that lack precise referents in the
specification and require elaborate explanations extraneous to both the
specification and the claims do not meet the standard of precision required by the
statute. In re Hammack, 427 F.2d 1378, 1381—82 (CCPA 1970).
“short ”
Claim 1 is directed to a method of manufacturing a structure in which a
single wire (“wiring” in claim 1) is broken into adjacent “short length wires.” The
Examiner finds the language “short” in claim 1 is a relative term of degree that is
not defined by the claim, not described according to a standard in Appellant’s
Specification, and one of ordinary skill in the art would not be reasonably apprised
of the scope of the invention. Ans. 9.
Appellant asserts the Specification provides a standard for ascertaining the
scope of “short,” citing paragraph 25. Appeal Br. 4—5 and Reply Br. 2—3.
Appellant contends short wires 24 described in paragraph 25 are wires having “a
length which takes advantage of the short length effect.” Appeal Br. 5 and Reply
Br. 3. Based on this, one of ordinary skill in the art “would understand that the
dimensions of the short wires 24 are defined with reference to an electrical
phenomenon (i.e., the short length effect).” Reply Br. 3.
Appellant’s argument is persuasive that the language “short length wires” in
claim 1 should be interpreted as “wires having a length which takes advantage of
the short length effect,” as described in paragraph 25 of the Specification. This
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determination alone, however, does not complete our analysis of whether the scope
of “short length wires” has been set out and circumscribed with a reasonable
degree of precision and particularity under the second paragraph of 35 U.S.C.
§112.
Claim 1 recites no further detail about the scope of the “short length wires”
with respect to the short length effect than to recite the wires “are below a
maximum length.” As asserted by Appellant, paragraph 25 of the Specification
states the dimensions of the short wires “will be a length which takes advantage of
the short length effect.” Paragraph 25 further describes “[t]he short wire length
effect is a function of the initial vacancy of the wire” which “is determined by the
length width and height, as well as its elemental composition, as is well known [in
the] art.” Therefore, paragraph 25 indicates the short length effect is related to the
type of material and the overall dimensions of a wire.
However, as stated by the Examiner at page 29 of Answer, the language
“takes advantage of’ and “function” used in paragraph 25 is not clear. Nor does
paragraph 25 disclose any particular method for determining whether a wire of a
specific elemental composition and particular size is short enough to exhibit the
short length effect and, therefore, fall within the scope of the “short length wires”
recited in claim 1. In fact, although paragraph 6 of the Specification states the
short length effect is known in the art, it also states “the design of short
interconnect wires is not a trivial task.”
Paragraph 25 provides one example by disclosing that “short wires can be
[a] length (L) of about 10 jum to about 100 jum and width (W) of about [greater]
than or equal to 90 nm” for “a 90 nm ground rule technology.” This example,
however, seems to provide an answer for what a particular short wire may be
without describing what methods are used to arrive at that answer. Moreover, it is
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unclear what material or “elemental composition” was used for the example
disclosed in paragraph 25. Therefore, the specific example in paragraph 25
provides little probative value for determining the scope of “short length wires” in
claim 1, which are not limited to any particular elemental composition or wires of
any specific dimensions, other than they must be “below a maximum length.” This
“maximum length” would appear to be the maximum length that a wire of a
specific elemental composition and particular dimensions (e.g., width and height)
may be to exhibit the short length effect. However, such a maximum length is also
unclear because no method of determining the maximum length, let alone a method
for determining any short length that would exhibit the short length effect, has
been described with any reasonable degree of precision and particularity in the
Specification.
The Specification, including paragraph 25, does not set forth any equation or
other method for determining the short length effect for a particular elemental
composition or wire of a particular size with any reasonable degree of precision
and particularity. Nor has Appellant provided any evidence that the short length
effect is well known in the art, other than the statement in paragraph 25 of the
Specification, and that one of ordinary skill in the art would be able to determine
whether a wire is a “wire having a length which takes advantage of the short length
effect” and therefore falls within the scope of the “short length wires” of claim 1.
Therefore, as stated by the Examiner at page 9 of the Examiner’s Answer, one of
ordinary skill in the art would not be informed about the scope of the claimed
invention. “[A] patent must be precise enough to afford clear notice of what is
claimed, thereby ‘apprising] the public of what is still open to them.’” Nautilus,
Inc. v. BiosigInstruments, Inc., 134 S. Ct. 2120, 2129 (2014) (citing Markman v.
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WestviewInstruments, Inc., 517 U.S. 370, 373 (1996) (quoting McClain v.
Ortmayer, 141 U.S. 419, 424 (1891))).8
Moreover during prosecution, Appellant is afforded the opportunity to
amend the claims and, thus, Appellant is in the best position to ensure that the
claims are drafted with a reasonable degree of precision and particularity. 35
U.S.C. § 112, second paragraph “puts the burden of precise claim drafting squarely
on the applicant.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997); see also
Halliburton Energy Servs. v. M-ILLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008)
(noting that “the patent drafter is in the best position to resolve the ambiguity in the
patent claims, and it is highly desirable that patent examiners demand that
applicants do so in appropriate circumstances so that the patent can be amended
during prosecution rather than attempting to resolve the ambiguity in litigation.”);
In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989) (“[DJuring patent prosecution when
claims can be amended, ambiguities should be recognized, scope and breadth of
language explored, and clarification imposed.... An essential purpose of patent
examination is to fashion claims that are precise, clear, correct, and unambiguous.
Only in that way can uncertainties of claim construction be removed, as much as
possible, during the administrative process.”).
8 See also United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236 (1942)
(“The statutory requirement of particularity and distinctness in claims is met only
when they clearly distinguish what is claimed from what went before in the art and
clearly circumscribe what is foreclosed from future enterprise.”); General Elec.
Co. v. Wabash Appliance Corp., 304 U.S. 364, 369 (1938) (“The limits of a patent
must be known for the protection of the patentee, the encouragement of the
inventive genius of others and the assurance that the subject of the patent will be
dedicated ultimately to the public.”).
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“maximum short length effect ”
Claim 12 is directed to a method of manufacturing a structure in which
adjacent wires are formed and “are below a maximum short length effect.” Claim
12 does not further limit the scope of “a maximum short length effect.” For the
reasons discussed above, the Specification does not set forth any method for
determining “a maximum short length effect” or even the “maximum short length
effect length” stated in paragraph 25 of the Specification with any reasonable
degree of precision and particularity. As noted above, although this maximum
length may appear to be the maximum length that a wire of a specific elemental
composition and particular dimensions (e.g., width and height) may be to exhibit
the short length effect, no method has been set out or circumscribed with a
reasonable degree of precision and particularity for one of ordinary skill in the art
to determine whether a wire of specific elemental composition and dimensions
falls within the scope of “a maximum short length effect” or a “maximum short
length effect length.”
“minimum ground rule for a particular node according to technolosv ground rules
for the structure ”
The Examiner further finds the language “wherein the overlap between the
conductive strap and the adjacent short length wires satisfies a minimum ground
rule for a particular node according to technology ground rules for the structure” in
claims 1 and 12 is indefinite because the language is not clearly defined in the
disclosure of the application and its meaning in the context of the claims is
indeterminable. Ans. at 9-10.
Appellant contends one of ordinary skill in the art would have understood
the meaning of this language because the language “ground rule” would have been
understood by such a person. Appeal Br. 5 and Reply Br. 4. To support this
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assertion, Appellant cites a reference and argues it states that ‘“ground rules’ are
established for successful yielding of the technology. Typically, these rules are
established based on semiconductor process and lithography limitations.” Appeal
Br. 5 and Reply Br. 4. As stated by the Examiner,9 this reference has not been
provided by Appellant. Moreover, this definition of a “ground rule” is vague and
provides no particular guidance for how one of ordinary skill in the art would
determine “a minimum ground rule,” as recited in claims 1 and 12. Therefore,
Appellant has not demonstrated that one of ordinary skill in the art would be able
to determine what falls within the scope of “a minimum ground rule for a
particular node according to technology ground rules for the structure,” as recited
in claims 1 and 12.
Appellant further argues the Specification provides an example of a ground
rule in paragraphs 25 and 26 by disclosing an overlap length of 90 nm or greater
for a 90 nm node in a 90 nm ground rule technology. Appeal Br. 6 and Reply Br.
4—5. Similar to the example for a short length wire in paragraph 25, this example
states one answer to the inquiry of what falls within the scope of the “minimum
ground rule” recited in claims 1 and 12 without describing with any reasonable
degree of precision and particularity any method for determining compliance with
a minimum ground rule.
Claims 2—11, 13—17, 22, and 23 depend from claims 1 and 12 but do not
cure the deficiencies of claims 1 and 12. For the reasons discussed above and
those set forth in the Examiner’s Answer, we sustain the Examiner’s § 112, second
paragraph, rejection of claims 1—17, 22, and 23 as being indefinite.
9 Ans. 30.
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Written Description Rejection
Claims 1—17, 22, and 23 are rejected under 35 U.S.C. § 112 as failing to
comply with the written description requirement.
The test for sufficiency of a written description is whether the disclosure
‘“clearly allow[s] persons of ordinary skill in the art to recognize that [the
inventor] invented what is claimed.’” AriadPharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed.Cir.2010) (enbanc) (quoting Vas—Cath Inc. v. Mahurkar,
935 F.2d 1555, 1562—63 (Fed.Cir.1991)). The disclosure must “reasonably
convey[ ] to those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Id. at 1351. Possession means “possession as
shown in the disclosure” and “requires an objective inquiry into the four comers of
the specification from the perspective of a person of ordinary skill in the art.” Id.
“a minimum ground rule for a particular node according to technology ground
rules for the structure”
The Examiner finds the language “the overlap between the conductive strap
and the adjacent short length wires satisfies a minimum ground mle for a particular
node according to technology ground mles for the structure” in claims 1 and 12 is
not described in Appellant’s Specification in such a way that reasonably conveys
to one of ordinary skill in the art that Appellant possessed the claimed invention at
the time Appellant’s application was filed. Ans. 11.
Appellant contends the Specification demonstrates Appellant had possession
of the claimed invention because paragraphs 25 and 26 disclose an example of a
ground mle for a 90 nm node. Appeal Br. 9-10 and Reply Br. 8—9, 12—15.
Appellant further argues “one of ordinary skill in the art would understand what is
necessary for satisfying a minimum ground mle for a particular node according to
technology ground mles for the structure.” Appeal Br. 10 and Reply Br. 9.
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Appellant’s sole example of a ground rule is not sufficient to demonstrate
Appellant possessed the claimed methods at the time Appellant’s application was
filed. The example is a ground rule for a 90 nm node. Claims 1 and 12, however,
are not limited to any specific node or set of technology ground rules. This
indicates that the scope of claims 1 and 12 encompasses much more than the single
example set forth in Appellant’s Specification. Moreover, as described above with
regard to the indefmiteness rejection, Appellant has not demonstrated that a
“minimum ground rule” was known in the art at the time Appellant’s application
was filed or that one of ordinary skill would have known how to determine a
“minimum ground rule.” Although Appellant discloses a particular example of a
ground rule for a 90 nm node, Appellant does not set forth any method for
determining that ground rule. As a result, Appellant’s disclosure does not
reasonably convey that Appellant had possession of the full scope of the subject
matter recited in claims 1 and 12.
“additive etching process ”
In addition, the Examiner finds the “additive etching process” recited in
claim 23 is not described in Appellant’s Specification in such a way that
reasonably conveys to one of ordinary skill in the art that Appellant possessed the
claimed invention at the time Appellant’s application was filed. Ans. 11.
Appellant asserts the Specification describes an “additive etching process”
because paragraphs 25 and 31 disclose that short wires “may be TaN lined copper
formed using conventional damascene processes such as, for example,
lithographic, etching and deposition processes known to those of skill in the art.”
Appeal Br. 12—13 and Reply Br. 10—11. Appellant argues that although paragraphs
25 and 31 do not explicitly disclose an “additive etching process,” one of ordinary
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skill in the art would have understood the processes recited in the paragraphs to be
additive processes. Reply Br. 11.
Appellant appears to argue that because paragraphs 25 and 31 describe the
listed exemplary processes, including etching, as “damascene processes,” etching
would implicitly be an “additive etching process,” not a subtractive etching
process. Appellant’s arguments are not persuasive that one of ordinary skill in the
art would have understood etching, as described in Appellant’s Specification, to be
an additive process because it has been described as one type of “damascene
processes.” Nor has Appellant demonstrated that an “additive etch process” was
known in the art as a type of damascene process at the time Appellant’s application
was filed.
Therefore, for these reasons and those set forth in the Examiner’s Answer,
the § 112, first paragraph, rejection of claims 1—17, 22, and 23 for failing to
comply with the written description requirement is sustained.
Enablement Rejection
Claims 1—17, 22, and 23 are rejected under 35 U.S.C. § 112 as failing to
comply with the enablement requirement.
“[T]o be enabling, the specification of a patent must teach those skilled in
the art how to make and use the full scope of the claimed invention without ‘undue
experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993) (citation
omitted).
“a minimum ground rule for a particular node according to technolosv ground
rules for the structure”
The Examiner finds one of ordinary skill in the art would not know how to
make and/or use the claimed invention because one would not know the meaning
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of the language “the overlap between the conductive strap and the adjacent short
length wires satisfies a minimum ground rule for a particular node according to
technology ground rules for the structure” in claims 1 and 12. Ans. 12—13.
Similar to the rejection above for failure to comply with the written
description requirement, Appellant asserts one of ordinary skill in the art would
have been able to make and/or use the claimed inventions without undue
experimentation because the Specification describes an example of a ground rule in
paragraphs 25 and 26 and one of ordinary skill in the art would understand what is
necessary to satisfy a “minimum ground rule for a particulate node according to
technology ground rules for the structure,” as recited in claims 1 and 12. Appeal
Br. 9-10 and Reply Br. 8—9, 12—15.
Appellant’s arguments are not persuasive. The example cited by Appellant
is a ground rule for a 90 nm node. However, claims 1 and 12 are not limited to any
specific node or set of technology ground rules. Therefore, claims 1 and 12 appear
to encompass more than the single data point provided by the example set forth in
Appellant’s Specification. Appellant’s disclosure also provides no guidance as to
what method or calculations one of ordinary skill in the art would utilize to
determine a “minimum ground rule” for a particular node under a set of technology
ground rules. Nor has Appellant demonstrated that a “minimum ground rule” was
known in the art or that one of ordinary skill would have known how to determine
a “minimum ground rule.”
Moreover, when one considers factors useful for analyzing whether the
enablement requirement has been met (e.g., the amount of direction or guidance
presented, the presence or absence of working examples, and the breadth of the
claims)10 one readily sees that Appellant’s disclosure, including its sole example,
10 In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
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provides a dearth of guidance for how one of ordinary skill in the art would
determine a “minimum ground rule,” especially when considering the possible
scope of claims 1 and 12 relative to the single example set forth in the
Specification. As a result, a preponderance of the evidence in the record supports
the Examiner’s rejection for failure to comply with the enablement requirement.
Moreover, Appellant’s assertion that one of ordinary skill in the art would
have understood what is necessary to satisfy “minimum ground rule for a
particulate node according to technology ground rules for the structure” is
unsupported and conclusory in nature, as stated by the Examiner at page 33 of the
Examiner’s Answer.
“a maximum short length effect ”
The Examiner finds one of ordinary skill in the art would not know how to
make and/or use the claimed invention because one would not know the meaning
of the language “a maximum short length effect” in claim 12. Ans. 12—13.
Appellant cites paragraph 25 of the Specification and argues one of ordinary
skill in the art would be able to reproduce the claimed invention because they
would understand the terms used in the claims and what is necessary to provide a
wire below a “maximum short length effect.” Appeal Br. 14—15 and Reply Br. 15—
16.
These arguments are not persuasive because, as discussed above,
Appellant’s Specification does not set forth any method for determining “a
maximum short length effect” or even the “maximum short length effect length”
stated in paragraph 25 of the Specification. Although a maximum length may
appear to be the maximum length that a wire of a specific elemental composition
and particular dimensions (i.e., width and height) may be to exhibit the short length
effect, Appellant’s disclosure provides no guidance for how one of ordinary skill in
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the art would determine “a maximum short length effect” or a “maximum short
length effect length.” The single example of a short length wire set forth in
Appellant’s Specification provides insufficient guidance for one of ordinary skill in
the art to make and use the full scope of the claimed invention, which appears to
encompass much more than the one example, without undue experimentation.
Therefore, for these reasons and those set forth in the Examiner’s Answer,
the § 112, first paragraph, rejection of claims 1—17, 22, and 23 for failing to
comply with the enablement requirement is sustained.
Rejections under §§ 102 and 103
We do not reach the merits of the rejection of claims 1, 9, and 10 under 35
U.S.C. § 102(b) as being anticipated by Chen; the rejection of claims 1—17, 22, and
23 under 35 U.S.C. § 103(a) as being unpatentable over Chen; or the rejection of
claims 1—17, 22, and 23 under 35 U.S.C. § 103(a) as being unpatentable over Chen
in view of Marple. As discussed above, the claims on appeal fail to comply with
35 U.S.C. § 112 (pre-AIA), first and second paragraphs. Considerable speculative
assumptions would be required to determine the scope of the claims. In such a
situation, it is not appropriate to address prior art rejections. See In re Steele, 305
F.2d 859, 862 (CCPA 1962) (reversed because § 103 rejection was based on
considerable speculation as to meaning of terms of claims and assumptions as to
their scope).
Thus, we procedurally reverse the Examiner’s rejections under §§ 102 and
103. We note that by procedurally reversing the Examiner’s § 102 rejection and
§103 rejections, we do not reach the merits of these rejections.
17
Appeal 2016-002615
Application 12/612,160
C. DECISION
For the reasons given above and in the Examiner’s Answer, the decision of
the Examiner rejecting claims 1—17, 22, and 23 under 35 U.S.C. § 112 (pre-AIA),
first paragraph, for failing to comply with both the written description and
enablement requirements, and second paragraph, for indefiniteness, is affirmed.
However, the decision of the Examiner rejecting claim 1—17, 22, and 23 under 35
U.S.C. §§ 102(b) and 103(a) over Chen, alone or in view of Marple, is
procedurally reversed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
18