Ex parte YU

Board of Patent Appeals and Interferences

Jul 18, 1997

07999609 (B.P.A.I. Jul. 18, 1997)

Application for patent filed December 31, 1992.1
1
Paper No. 18
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte SHIH-CHIANG YU
______________
Appeal No. 95-2665
Application 07/999,6091
_______________
ON BRIEF
_______________
Before CALVERT, THOMAS, and TORCZON, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant has appealed to the Board from the examiner’s
final rejection of claims 5-18, which constitute all the claims
in the application.
Appeal No. 95-2665
Application 07/999,609
2
Representative claim 5 is reproduced below:
5. A non-volatile semiconductor memory cell comprising:
a semiconductor substrate;
a source having a first portion and a second portion therein
formed in said semiconductor substrate;
a drain formed in said semiconductor substrate spaced from
said source;
a channel including a first portion, a second portion, and a
third portion therein disposed between said drain and said
source, said channel having a conductivity;
an elongated Y-control trace dielectrically disposed atop
said third portion of said channel and said first portion of said
source;
an elongated X-control trace dielectrically disposed atop
said Y-control trace and substantially perpendicular therewith;
said X-control trace having a portion thereof dielectrically
disposed atop said first portion of said channel; and
a floating gate having a first segment thereof
dielectrically disposed between said X-control and Y-control
traces, a second segment thereof dielectrically disposed atop
said second portion of said channel, and a third portion thereof
dielectrically disposed atop said second portion of said source;
wherein when said X-control and Y-control traces are
substantially simultaneously positively energized, electrical
charges are couplingly induced in said floating gate from said
channel by source side injection effect allowing said floating
gate to couplingly vary the conductivity of said channel after
de-energization of said control traces, thereby enabling the
non-volatile memory cell to be programmable, and wherein when
said X-control and Y-control traces are substantially
simultaneously negatively energized, electrical charges are
couplingly induced out of said floating gate to said source by
Appeal No. 95-2665
Application 07/999,609
Our understanding of these two references is based upon translations2
provided by the Scientific and Technical Information Center of the Patent
and Trademark Office. Copies of these translations are enclosed with this
opinion. Because of the dates of the translations, it appears that the
examiner obtained translations in preparation of the Examiner’s Answer, which
quotes-in-part from translation pages. The file record is not clear if
appellant has been supplied copies of the translations. Therefore, we are
supplying copies as attachments to this opinion.
3
Fowler-Nordheim tunneling effect allowing said floating gate to
couplingly vary the conductivity of said channel after de-
energization of said control traces, thereby enabling the non-
volatile memory cell to be deprogrammable.
The following references are relied on by the examiner:
Arima et al. (Arima) 5,101,250 Mar. 31, 1992
Guterman 5,153,691 Oct. 6, 1992
Ma et al. (Ma) 5,280,446 Jan. 18, 1994
(effective filing date Sep. 20, 1990)
Komori et al. (Komori)
(Japanese Kokai) 61-144878 July 2, 19862
Hasunuma
(Japanese Kokai) 61-216482 Sep. 26, 19862
Claims 5-18 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness, the examiner relies upon Guterman in
view of Hasunuma, further in view of Komori and Ma as to claims
5, 6 and 8-16, with the addition of Arima as to claims 7, 17 and
18. An outstanding rejection of certain claims under the second
paragraph of 35 U.S.C. § 112 from the final rejection was not
repeated in the answer. Therefore, it is not before us.
Appeal No. 95-2665
Application 07/999,609
4
The file record indicates that after the examiner’s
initial reliance upon Ma, which has a filing date of June 8,
1992, appellant filed an affidavit under 37 CFR § 1.131. The
Advisory Action issued on May 6, 1994, explains the examiner’s
non-acceptance of the evidence provided by this affidavit and
in turn relies upon the effective filing date of September 20,
1990 as the basis for the rejection. Since there have been no
subsequent submissions to correct any and all deficiencies
with respect to the § 131 affidavit and/or any additional
challenges by appellant as to the findings of the examiner in
this Advisory Action in the brief or reply brief, we consider
this a settled issue.
Rather than repeat the positions of the appellant and the
examiner, reference is made to the briefs and the answer for the
respect details thereof.
OPINION
We reverse all rejections under 35 U.S.C. § 103.
The examiner’s statement of the rejection is essentially set
forth in its basic form at pages 3 through 6 of the answer and
amplified at pages 8-10 thereof, both of which assert the
combinability of the teachings and suggestions of Guterman,
Hasunuma, Komori and Ma. The examiner’s approach is to utilize
Appeal No. 95-2665
Application 07/999,609
5
Guterman as a basic or starting-point reference which is asserted
to teach representative independent claim 5 on appeal except for
certain identified features at page 4 of the answer. Each of the
respective other references is discussed in detail extensively
with the approach to justify the obviousness of modifying
Guterman to account for the claimed differences between his
teachings and that which is set forth in representative
independent claim 5 on appeal.
The reasoning of the examiner at pages 4-6 of the answer
is difficult to follow and does not appear to us to take a
prospective look at the teachings and/or suggestions of each and
all of the references relied upon but, in fact, appears to us to
look at them in prohibitive hindsight using claim 5 to guide the
examiner in a combinability-type reasoning process. This is the
initial argued position of the appellant in the principal brief
on appeal. Thus, we tend to agree with appellant that there has
been a selective picking and choosing by the examiner of the
various features of the representative prior art relied upon to
arrive at the claimed invention. We also conclude that the
examiner essentially therefore has not set forth a prima facie
case of obviousness.
Appeal No. 95-2665
Application 07/999,609
6
We are mindful of the teaching of Komori at page 11 of the
translation that indicates that source side injection is strongly
preferred as a programming approach in floating gate memory
devices because of its increased efficiency over the drain side
injection approaches of the prior art. This is confirmed by the
comparable teaching in Ma in the paragraph bridging columns 4 and
5 of this reference, a portion relied upon by the examiner. This
is a positively recited limitation in independent claim 5 and one
which is inferred in independent claim 14 on appeal. However, we
are left at a loss as to determine why the artisan would have
chosen, from the prior art relied on, the specifically recited
Fowler-Nordheim tunneling effect approach in independent claim 5
on appeal (and impliedly recited in independent claim 14 on
appeal) as a deprogramming technique and to do so through the
source as recited in both independent claims 5 and 14 on appeal.
Each of independent claims 5, 8, 9 and 14 recite in various
degrees of specificity a certain overlappedness of certain
portions and/or regions of structure recited among each other
in each of these respective claims. The examiner’s rationale
attempts to extend and/or modify the teachings of the overlap-
pedness of the structure Figure 1 of Guterman based upon the
teachings of the secondary references. However, we remain
Appeal No. 95-2665
Application 07/999,609
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unconvinced that the artisan would have done so from the
rationales expressed by the examiner and/or the teachings of
each of these references.
This indirectly relates to the argued position from
appellant that a three transistor structure is disclosed. It may
be disputed as to the detail in which this feature is indirectly
recited in each independent claim on appeal, yet Guterman does
set forth an equivalent three transistor structure in Figures 1-
2. This is the only reference from which we can clearly discern
that a three transistor structure is taught and/or suggested.
The other references appear to teach either one and/or two
transistors. This is critical to an understanding of the overall
structure of each independent claim on appeal as a starting point
because the simultaneity of the accessibility of each cell in the
functional wherein clause is based upon the substantial
simultaneous energization of the claimed first and second traces.
As dis-closed, this activates the middle transistor in
representative Figure 5 of the disclosed invention. This we are
urged would be done effectively in Guterman, but we remain
unconvinced of the simultaneity in that reference alone even as
modified by the single and/or double transistor teachings in
Hasunuma, Komori and Ma.
Appeal No. 95-2665
Application 07/999,609
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Although the charging of the floating gate from the
substrate and the discharging of the floating gate into the
substrate in the wherein clause at the end of independent
claim 9 on appeal is relatively broadly recited and therefore
encompasses any and all programming and/or deprogramming
approaches from the prior art either admitted by appellant at
specification page 1 or represented by the references relied upon
by the examiner, we remain unconvinced of the obviousness of
physically extending the second control trace on top of the first
control trace of Guterman to reach even independent claims 8 and
9 on appeal. In other words, we are left at a loss as to
determine why the artisan would have extended the erase electrode
130 over the programming electrode 110 in Figure 1 of Guterman
based upon the teachings and suggestions and line of reasoning of
the examiner as to Hasunuma, Komori and Ma.
Page 6 of the Reply Brief raises two questions which have
not been answered by the examiner in any supplemental answer.
We are unable to answer them ourselves. The first question
relates to the substance of the last paragraph of this opinion.
Appellant again asserts that Guterman teaches away from doing so
as set forth in the original pages of the brief, which portion
Appeal No. 95-2665
Application 07/999,609
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is not answered by the examiner in a persuasive manner in the
responsive arguments portion of the answer. The second question
at page 6 of the reply brief relates to Ma and its alleged
failure to address the simultaneous energization of both control
traces, a feature we also discussed earlier in this opinion.
Thus, the examiner appears to have failed to address the
substantive arguments raised by appellant in the brief and reply
brief as to certain claimed features and/or certain deficiencies
in the prior art relied upon. In order for us to sustain the
examiner’s rejections under 35 U.S.C. § 103, we would need to
resort to speculation or unfounded assumptions to supply
deficiencies in the factual basis of the rejections. In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968), reh’g denied, 390 U.S. 1000 (1968).
This we decline to do. We cannot independently agree with the
motivation or rationale expressed by the examiner as a basis to
combine the respective teachings or suggestions of the prior art
relied upon to arrive at the claimed invention. Arima, as
argued, appears cumulative as to certain teachings over the other
Appeal No. 95-2665
Application 07/999,609
From our study of the claims, we note the following in passing. The3
“first portion” in claim 7, line 3, should probably be --second portion-- to
agree with claim 18, Figure 4b and specification pages 10 and 11.
10
references relied on and does not appear to cure the noted
deficiencies in the examiner’s positions. 3
In view of the foregoing, the decision of the examiner
rejecting claims 5-18 under 35 U.S.C. § 103 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
JAMES D. THOMAS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
RICHARD TORCZON )
Administrative Patent Judge )

Appeal No. 95-2665
Application 07/999,609
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Kam T. Tam
Patent Agent
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San Jose, CA 95148
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