Ex parte FORD et al.

Board of Patent Appeals and Interferences

Feb 20, 1998

07962952 (B.P.A.I. Feb. 20, 1998)

Application for patent filed October 16, 1992.1
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(2) is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte CHRISTOPHER J. FORD and ARTHUR J. WAGER
__________
Appeal No. 95-2576
Application 07/962,9521
__________
HEARD: Feb. 03, 1998
__________
Before BARRETT, FLEMING and JERRY SMITH, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 12, all of the claims present in the
application.
Appeal No. 95-2576
Application 07/962,952
2
The invention relates to a method for testing an integrated
circuit device to determine if latent defects exist within the
device. Appellants disclose on page 3 of the specification that
the method includes applying a voltage to the integrated circuit
and controlling the voltage being applied to the integrated
circuit device as a function of the channel lengths.
The independent claim 1 is reproduced as follows:
1. A method for testing an integrated circuit device, said
integrated circuit device having a plurality of electronic
devices, each of said plurality of electronic devices having a
channel of a predetermined length, said testing method comprising
the steps of:
applying a voltage to said integrated circuit device;
and
controlling said voltage being applied to said
integrated circuit device as a function of channel
lengths.
The Examiner relies on the following references:
Groves et al. 4,588,945 May 13, 1986
Schinabeck 4,637,020 Jan. 13, 1987
Claims 3, 6, 8, 9 and 12 stand rejected under 35 U.S.C.
§ 112, second paragraph, for failing to particularly point out
and distinctly claim the subject matter which Appellants regard
as the invention. Claims 1 through 4, 6, 8, 10 and 12 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Groves.
Claims 5, 7, 9 and 11 stand rejected under 35 U.S.C. § 103 as
Appeal No. 95-2576
Application 07/962,952
Appellants filed an appeal brief on October 20, 1994. We2
will refer to this appeal brief as simply the brief. Appellants
filed a reply appeal brief on March 9, 1995. We will refer to
this reply appeal brief as the reply brief. The Examiner
responded to the reply brief with a letter, mailed April 20,
1995, stating that the reply brief has been entered and
considered but no further response by the Examiner is deemed
necessary.
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being unpatentable over Groves and Schinabeck.
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the briefs and answer for the2
respective details thereof.
OPINION
We will not sustain the rejection of claims 3, 6, 8, 9 and
12 under 35 U.S.C. § 112, second paragraph, as well as the
rejection of claims 1 through 12 under 35 U.S.C. § 103.
Analysis of 35 U.S.C. § 112, second paragraph, should begin
with the determination of whether claims set out and circumscribe
the particular area with a reasonable degree of precision and
particularity; it is here where definiteness of the language must
be analyzed, not in a vacuum, but always in light of teachings of
the disclosure as it would be interpreted by one possessing
ordinary skill in the art. In re Johnson, 558 F.2d 1008, 1015,
194 USPQ 187, 193 (CCPA 1977), citing In re Moore, 439 F. 2d
1232, 1235, 169 USPQ 236, 238 (1971). Furthermore, our
Appeal No. 95-2576
Application 07/962,952
4
reviewing court points out that a claim which is of such breadth
that it reads on subject matter disclosed in the prior art is
rejected under 35 U.S.C. § 102 rather than under 35 U.S.C. § 112,
second paragraph. See In re Hyatt, 708 F.2d 712, 715, 218 USPQ
195, 197 (Fed. Cir. 1983) and In re Borkowski, 422 F.2d 904, 909,
164 USPQ 642, 645-46 (CCPA 1970).
On pages 4 and 5 of the answer, the Examiner argues that the
term "capable" in Appellants’ claims 3, 6 and 12 should be
avoided because it is not clear whether or not anything happens.
We note that claims 3, 6 and 12 recite "predetermining from known
electronic device characteristics a shortest channel length
capable of receiving said maximum voltage." On pages 8 and 9 of
the specification, Appellants disclose the selection step which
determines the maximum voltage to be applied to a device under
test. Appellants disclose that the voltage is determined based
upon the maximum voltage that the shortest channel length is
capable of receiving without damage to the device. In light of
the teachings of the disclosure as it would be interpreted by one
possessing ordinary skill in the art, we find that the language
"predetermining from known electronic device characteristics a
Appeal No. 95-2576
Application 07/962,952
5
shortest channel length capable of receiving said maximum
voltage" is definite. Therefore, we find that the above quoted
Appellants’ claim language sets out and circumscribes the
particular area with a reasonable degree of precision. In view
of the foregoing, we will not sustain the Examiner’s decision
that Appellants’ claims 3, 6, 8, 9 and 12 are properly rejected
under 35 U.S.C. § 112, second paragraph.
Turning to the Examiner's rejection of Appellants' claims
under 35 U.S.C. § 103, the Examiner has failed to set forth a
prima facie case. It is the burden of the Examiner to establish
why one having ordinary skill in the art would have been led to
the claimed invention by the express teachings or suggestions
found in the prior art, or by implications contained in such
teachings or suggestions. In re Sernaker, 702 F.2d 989, 995, 217
USPQ 1, 6 (Fed. Cir. 1983). "Additionally, when determining
obviousness, the claimed invention should be considered as a
whole; there is no legally recognizable 'heart' of the
invention." Para-Ordnance Mfg. v. SGS Importers Int’l, Inc., 73
F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995), cert.
denied, 117 S.Ct. 80 (1996) citing W. L. Gore & Assocs., Inc. v.
Appeal No. 95-2576
Application 07/962,952
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Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984).
The Examiner states on page 6 of the answer that "Groves
does not explicitly show the step of controlling the applied
voltage as a function of said channel lengths." The Examiner
states on the same page that Grove shows the device under test is
connected to the test apparatus via various wires. The Examiner
further states that the "feature of controlling the applied
voltage as a function of the wire lengths is inherent in the
operation of the Grove's test apparatus in order for Grove's wire
to usually stay in the safe region." On page 12 of the answer,
the Examiner argues that Appellants' claimed term "channel" does
not exclude the inclusion of the Grove's wire lengths.
Appellants argue on pages 2 through 4 of the reply brief
that the Examiner has improperly interpreted "channel length" as
recited in Appellants' claims as including a wire length.
Appellants argue that the definition of "channel lengths" cannot
include wire lengths. Appellants argue that the Appellants'
specification, at page 6, defines a channel as "... an end-to-end
electrical path through a semiconductor body, for example, a
Appeal No. 95-2576
Application 07/962,952
7
field-effect transistor." We note that Appellant's specification
at page 6, lines 18-21, recites:
As used herein, channel refers to the end-to-end
electrical path through a semiconductor body, for
example, a field-effect transistor.
Appellants conclude that since Appellants' specification clearly
defines the term "channel" as the end-to-end electrical path
through a semiconductor body thereby excluding a metal wire, the
invention is not rendered obvious by the wire lengths taught in
Groves.
When interpreting a claim, words of the claim are generally
given their ordinary and accustomed meaning, unless it appears
from the specification or the file history that they were used
differently by the inventor. Carroll Touch, inc. v. Electro
Mechanical Sys., Inc. 15 F.3d 1573, 1577, 27 USPQ2d 1836, 1840
(Fed. Cir. 1993). We find that Appellants' specification as well
as the file history show that Appellants used the term "channel"
to mean the end-to-end electrical path through a semiconductor
body. Thus, Appellants' claims distinguish the Grove's wire
lengths and the Examiner erred interpreting the Appellants'
claims as reading on the Grove's wire lengths. Furthermore, we
fail to find that Schinabeck overcomes this deficiency.
Appeal No. 95-2576
Application 07/962,952
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We have not sustained the rejection of claims 3, 6, 8, 9 and
12 under 35 U.S.C. § 112, second paragraph, or the rejection of
claims 1 through 12 under 35 U.S.C. § 103. Accordingly, the
Examiner's decision is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-2576
Application 07/962,952
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Heslin & Rothenberg, P.C.
Attn: Blanche E. Schiller, Esq.
5 Columbia Circle
Albany, New York 12203