Ex parte HAYASHI et al.

Board of Patent Appeals and Interferences

Feb 23, 1998

08025822 (B.P.A.I. Feb. 23, 1998)

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(2) is not binding precedent of the Board.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. 41
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte YUTAKA HAYASHI, YOSHIKAZU KOJIMA,
RYOJI TAKADA, and MASAAKI KAMIYA
_______________
Appeal No. 95-3675
Application 08/025,8221
_______________
HEARD: Feb. 2, 1998
_______________
Before KRASS, LEE, and TORCZON, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 3 through 7, 9 and 10. Claims 1 and 11 through 19 have
been allowed. Claim 8 has been canceled. By amendment of
November 7, 1994 (Paper No. 23), claims 9 and 10 should

1 Application for patent filed March 3, 1993. According to
appellants, this application is a continuation of Application
07/492,085, filed March 12, 1990, now abandoned.
Appeal No. 95-3675
Application No. 08/025,822
2
depend from independent claim 3 and not from claim 8 as recited
in the copy of the claims forming the appendix to the principal
brief.
The invention pertains to a semiconductor device which can
be employed as both a volatile and a nonvolatile memory. More
particularly, information is not erased from the memory cell even
after carrying out random-access reading. The invention is best
understood from an analysis of independent claim 3 together with
reference to Figure 1. Claim 3 is reproduced as follows:
3. A semiconductor memory cell formed on a substrate,
comprising:
storage means disposed on the substrate for storing electric
charge to memorize nonvolatile information;
injecting means for injecting electric charge into the
storage means;
supplying means for supplying electric charge to the
injecting means;
volatile control means operable to write volatile
information and to temporarily maintain the volatile information,
the volatile control means being interposed between the injecting
means and the supplying means for controlling flow of electric
charge from the supplying means to the injecting means according
to the volatile information temporarily written in the volatile
control means;
random-access potential setting means for setting a
potential of the volatile control means on a random access basis
to write volatile information into the volatile control means,
the random-access potential setting means including switching
means for effecting setting of the potential of the volatile
control means on a random access basis; and
nonvolatile control means for controlling the injection of
the electric charge from the injecting means to the storage means
Appeal No. 95-3675
Application No. 08/025,822
3
to thereby write thereinto nonvolatile information which is
representative of the corresponding volatile information written
in the volatile control means.
The examiner relies on the following reference:
Logie 4,924,278 May 8, 1990
Claims 3 through 7, 9 and 10 stand rejected under 35 U.S.C.
' 103 as unpatentable over Logie.
Reference is made to the briefs and answer for the
respective positions of appellants and the examiner.
OPINION
We reverse.
In applying Logie to independent claim 3, the examiner
identifies, in Figure 4 of Logie, a storage means 38, injecting
means 55 and 24, supplying means 22, volatile control means 25
and a random-access potential setting means 28. The examiner
contends that it would have been “obvious that the signals are
applied to the volatile control means on a random access basis to
write volatile information into the volatile control means”
[answer-page 3].
The examiner’s position, incorrect in our view, is that the
instant claim language is so broad as to encompass that which is
taught by Logie.
First, appellants cite In re Donaldson, 16 F.3d 1189, 1193,
29 USPQ2d 1845, 1848 (Fed. Cir. 1994) for the proposition that 35
U.S.C. ' 112, sixth paragraph, requires that the means-plus-
Appeal No. 95-3675
Application No. 08/025,822
4
function language of the instant claims be construed to cover the
corresponding structure, and its equivalents, taught by the
instant disclosure. The switching means of the instant
disclosure, and its equivalents, shown, for example on the right
side of Figure 1 and in Figures 5 and 6 constitute the disclosed
structure for the claimed “random-access potential setting means
for setting a potential of the volatile control means…”
While there may be debate on what constitutes an
“equivalent” to this disclosed structure, and the examiner never
comes to grips with this issue as the examiner never responded to
appellants’ reply brief, the examiner admits [answer-page 3] that
“it is clear that appellant’s [sic, appellants’] discloses [sic,
disclosed] structure is different from the structure taught by
Logie.” Accordingly, the examiner recognizes that the disclosed
structure to which the claimed “means-plus-function” (relating to
the “random-access potential setting means”) language refers, in
accordance with 35 U.S.C. ' 112, paragraph 6, is not taught or
suggested by Logie.
More particularly, the claimed “random-access potential
setting means for setting a potential of the volatile control
means…” is construed to include a switch (FET or diode
arrangement) including a source region connected to a gate (which
is the volatile control means) and another gate connected to a
word line. In Logie, however, the word line is connected
Appeal No. 95-3675
Application No. 08/025,822
5
directly to control gate 28 which is situated directly above
channel region 25, considered to be the “random-access potential
setting means.” While a voltage applied to the word line in
Logie activates transistor 20, the “volatile control means” 25
therein does not maintain the voltage potential when control gate
electrode 28 is deactivated because “volatile control means” 25
is controlled in response to data on the word line supplied to
control gate electrode 28. Thus, Logie does not appear to teach
or suggest the claimed “switching means for effecting setting of
the potential of the volatile control means on a random access
basis.”
Thus, Logie does not appear to disclose or suggest either
the structure or the function set forth in independent claim 3.
Accordingly, the examiner’s decision rejecting claims 3 through
7, 9 and 10 under 35 U.S.C. ' 103 is reversed.
REVERSED
Errol A. Krass )
Administrative Patent Judge )
)
)
)
Jameson Lee ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Richard Torczon )
Administrative Patent Judge )
Appeal No. 95-3675
Application No. 08/025,822
6
Adams & Wilks
50 Broadway
31st Floor
New York, NY 10004