Ex parte MANIAR

Board of Patent Appeals and Interferences

Oct 21, 1998

08215170 (B.P.A.I. Oct. 21, 1998)

Application for patent filed March 21, 1994. According to appellant,1
this application is a continuation of Application 07/807,327, filed December
16, 1991.
1

Paper No. 28
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(2) is not binding precedent of the Board.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 PAPU D. MANIAR
______________
Appeal No. 96-2697
Application 08/215,1701
_______________
ON BRIEF
_______________
Before MARTIN, JERRY SMITH and BARRETT, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-4 and 14-26. Claims
Appeal No. 96-2697
Application 08/215,170
2
5-7 have been allowed by the examiner. Claims 8-13 have been
cancelled.
The disclosed invention pertains to a semiconductor
device, and particularly, to a layer of spin on glass (SOG)
overlying the substrate and device layers of the semiconductor
device. The invention is specifically directed to the
composition of the SOG.
Representative claim 1 is reproduced as follows:
1. A semiconductor device comprising:
a substrate material;
a plurality of device layers overlying the substrate
material;
a layer of a spin on glass also overlying the substrate
material, the spin on glass comprising:
on the order of 0% to 20% by volume of
tetraethylorthosilicate (TEOS);
on the order of 0.01% to 20% by volume of
tetraethylorthogermanate (TEOG);
on the order of 0% to 1% by volume the equivalent of
nitric acid (HNO );3
on the order of 70% to 85% by volume of alcohol; and a
remaining balance of water, wherein the ratio of volume of
water to the sum of volume of TEOS and TEOG is less than 0.80.
Appeal No. 96-2697
Application 08/215,170
3
The examiner relies on the following reference:
Lehrer 4,654,269 Mar. 31, 1987
Claims 1-4 and 14-26 stand rejected under 35 U.S.C.
§ 112, first paragraph, as being based on an inadequate
disclosure. Claims 1-4 and 14-26 also stand rejected under
35 U.S.C. § 103. As evidence of obviousness the examiner
offers Lehrer taken alone. The Section 103 rejection is a new
ground of rejection in the examiner’s answer which reasserts a
rejection that was made and dropped during earlier prosecution
of this invention.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner, the arguments
in support of the rejections and the evidence of obviousness
relied upon by the examiner as support for the obviousness
rejection. We have, likewise, reviewed and taken into
Appeal No. 96-2697
Application 08/215,170
4
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the disclosure in this application describes
the claimed invention in a manner which complies with the
requirements of
35 U.S.C. § 112. We are also of the view that the evidence
relied upon and the level of skill in the particular art would
not have suggested to one of ordinary skill in the art the
obviousness of the invention as set forth in claims 1-4 and
14-26. Accordingly, we reverse.
At the outset, we note that appellant has made several
arguments directed to the prosecution of this application and
the parent application. Specifically, appellant argues that
added material to the disclosure which is now being viewed as
new matter was specifically approved by a different examiner
during the course of earlier prosecution. Appellant also
argues that the prior art rejection was made by a different
Appeal No. 96-2697
Application 08/215,170
5
examiner during the course of earlier prosecution and was
overcome by appellant. Appellant basically argues that a new
examiner should not be permitted to reassert all the
rejections which were previously overcome by appellant during
prosecution before other examiners. Although we are
sympathetic to appellant’s frustration caused by the course of
prosecution in this application and the parent application,
our jurisdiction does not extend to these matters. Our
jurisdiction is limited to a consideration of the propriety of
rejections on the merits. The issues raised by appellant
regarding the prosecution of this application should have been
raised by appropriate and timely petition to the Commissioner.
We consider first the rejection of claims 1-4 and 14-
26 under the first paragraph of 35 U.S.C. § 112. This
rejection resulted from an amendment to the specification and
the claims which identified the relationship of the
composition of materials in the SOG as specific values of
molar ratios. The original specification and claims only
referred to the components as having respective percentages by
volume of the total mixture. The examiner’s rejection asserts
Appeal No. 96-2697
Application 08/215,170
6
that there is no basis for these ratio values in the original
disclosure [answer, pages 2-3]. Appellant argues that the
recitation of molar values is a straightforward conversion of
disclosed percent volume amounts
to equivalent molar amounts.
The rejection for lack of support relates to the
written description requirement of 35 U.S.C. § 112. The
purpose of the written description requirement is to ensure
that the applicants convey with reasonable clarity to those
skilled in the art that they were in possession of the
invention as of the filing date of the application. For the
purposes of the written description requirement, the invention
is "whatever is now claimed."
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1564, 19 USPQ2d
1111, 1117 (Fed. Cir. 1991).
Appellant’s arguments regarding the equivalence of the
disclosed and claimed molar ratios to the percentage volume
ratios are not relevant to the claims which are presently
before us. No molar ratios are recited in the claims. The
claims simply recite components by percentage of volume and
Appeal No. 96-2697
Application 08/215,170
7
ratios according to volumes. The original disclosure clearly
disclosed all the volume percentages currently being claimed.
The only question is whether the specific values of volume
ratios are supported by the original disclosure. Using claim
1 as an example, we will show that the volume ratio recited
therein is clearly supported by the original disclosure and
the claim itself.
The volume percentages of the components recited in
claim 1 are exactly the same as set forth in the original
disclosure [Summary of the Invention, page 3]. The preferred
embodiment for the various components is set forth on page 6
of the original disclosure. The preferred embodiment as
described at page 6 uses 10% by volume TEOS, 10% by volume
TEOG, 0.5% by volume nitric acid, 78% by volume alcohol, and
1.5% by volume water. Claim 1 recites that the ratio of
volume of water to the sum of volume of TEOS and TEOG is less
than 0.80. Since the components of the mixture are already
given in volume percentages, the volume ratio is a
straightforward substitution. More particularly, for the
preferred embodiment, the water is 1.5% by volume of the total
Appeal No. 96-2697
Application 08/215,170
8
mixture, and the sum of TEOS and TEOG is 20% by volume of the
total mixture. Therefore, the ratio of volume of water to sum
of volume of TEOS and TEOG is 1.5% divided by 20% which equals
0.075.
Thus, the originally disclosed preferred embodiment
clearly meets the ratio limitation of less than 0.80 as
recited in claim 1. In fact, the range of volume percentages
in the claims are so large that the ratio of one component to
another can obviously vary over a very large range as well.
The original disclosure and claims clearly allowed for the
selection of components by volume which would meet the
specific claimed ratios recited in the claims. The original
disclosure permitted ratio values to be much larger than the
specific ratios now being claimed. In other words, the
present claims represent a narrower range of values than was
included within the original disclosure. We find that
the volume percentage ranges as disclosed and claimed would
permit ratios to cover a wide spectrum of values including the
values set forth in the claims. We also find that the
preferred embodiment of the disclosure meets the values
Appeal No. 96-2697
Application 08/215,170
9
recited in claim 1. It is not necessary that the
specification specifically identify all claimed narrower
values which fall within the broader range as set forth in the
original disclosure. Therefore, as a factual matter, persons
skilled in the art would consider the ratios recited in the
claims to be part of appellant’s original disclosure. Note In
re Wertheim, 541 F.2d 257, 264, 191 USPQ 90, 98 (CCPA 1976).
Under the facts of this case, as long as the presently claimed
values fall within the range of values as originally
disclosed, appellant has satisfied the written description
requirement because he was clearly in possession of the
invention at the time of filing the application.
To the extent that the examiner’s rejection is based
on the fact that the identical language of the claims does not
appear in the original disclosure, we observe that a
difference in language between the disclosure and the claims
is not alone controlling. Written description support under
the first paragraph of Section 112 does not require literal
support for the later claimed invention. Id. The invention
recited in the appealed claims represents a narrower range of
Appeal No. 96-2697
Application 08/215,170
10
values from the
values permitted in the disclosure. Appellant is entitled to
claim the invention as broadly as the prior art permits.
In summary, the specific ratio values recited in the
appealed claims clearly result from a selection of components
within the range of values permitted by the original
disclosure. Therefore, we do not sustain the rejection of the
claims under the first paragraph of 35 U.S.C. § 112.
We now consider the rejection of claims 1-4 and 14-26
under 35 U.S.C. § 103. In rejecting claims under 35 U.S.C.
§ 103, it is incumbent upon the examiner to establish a
factual basis to support the legal conclusion of obviousness.
See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed.
Cir. 1988). In so doing, the examiner is expected to make the
factual determinations set forth in Graham v. John Deere Co.,
383 U.S. 1, 17, 148 USPQ 459, 467 (CCPA 1966), and to provide
a reason why one having ordinary skill in the pertinent art
would have been led to modify the prior art or to combine
Appeal No. 96-2697
Application 08/215,170
11
prior art references to arrive at the claimed invention. Such
reason must stem from some teaching, suggestion or implication
in the prior art as a whole or knowledge generally available
to one having ordinary skill in the art. Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438
(Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil,
Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293,
227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S.
1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These
showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992).
The examiner cites Lehrer as a teaching of making an
SOG for a semiconductor device which is composed of TEOS,
TEOG, alcohol, nitric acid and water. The respective amounts
of these components in Lehrer are set forth in grams of each
constituent in the mixture [columns 9-10]. Although the
examiner asserts that Lehrer teaches the percentages of TEOS
Appeal No. 96-2697
Application 08/215,170
12
and TEOG recited in the claims, the examiner also indicates
that it would have been obvious to the artisan to optimize the
SOG composition to meet the claimed invention [answer, pages
3-4].
This rejection was made earlier in the prosecution of
this application, but it was removed when appellant submitted
arguments and a declaration to support his position that the
mass values set forth in Lehrer could not meet the composition
percentages recited in the appealed claims. The rejection has
been reintroduced in the answer without any discussion of the
arguments and evidence previously submitted by appellant.
Appellant argues that the examiner does not provide a prima
facie case of obviousness since the rejection does not respond
to the arguments and evidence provided earlier by appellant
[reply brief, pages 2-3]. Appellant also argues that the
claimed percentages do not result from a mere obvious
optimization of the Lehrer teachings.
We agree with appellant for the reasons presented by
him. Although it would have been easier to use density values
to simply convert the grams in Lehrer to volume percentages,
Appeal No. 96-2697
Application 08/215,170
13
we can find nothing wrong with appellant’s effort to convert
his invention and Lehrer to equivalent molar values.
Appellant’s calculations and our independent calculations
verify that the mass values set forth in Lehrer cannot satisfy
the composition recitations as set forth in the appealed
claims. Thus, the examiner’s position that Lehrer teaches the
percentages recited in the claims is clearly erroneous.
We also agree with appellant that there is no support
for the examiner’s conclusion that the claimed invention is an
obvious optimization of the Lehrer teachings. Since the
claimed amounts fall outside of the ranges suggested by
Lehrer, the claimed invention is different from Lehrer rather
than an optimization of Lehrer. An optimization of Lehrer
would be to select the best values within the ranges taught by
Lehrer. Lehrer teaches away from the values claimed by
appellant. Therefore, the examiner has not made a prima facie
case of the obviousness of the invention as set forth in the
appealed claims. Accordingly, we do not sustain the rejection
of the claims as being obvious over the teachings of Lehrer.
In conclusion, we have not sustained either of the
Appeal No. 96-2697
Application 08/215,170
14
examiner’s rejections of the claims on appeal. Therefore, the
decision of the examiner rejecting claims 1-4 and 14-26 is
reversed.
REVERSED
JOHN C. MARTIN )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LEE E. BARRETT )
Administrative Patent Judge )
JS/cam
Maurice J. Jones
Motorola, Inc.
Intellectual Prop. Dept. Suite 500
505 Barton Springs Road
Austin, TX 78704