Ex parte Wills et al.

Board of Patent Appeals and Interferences

Aug 24, 1998

08070487 (B.P.A.I. Aug. 24, 1998)

Application for patent filed June 2, 1993. According1
to appellants, this application is a continuation of
Application No. 07/692,088, filed April 26, 1991, now
abandoned.
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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journal and (2) is not binding precedent of the Board.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 KENDALL S. WILLS and PAUL A. RODRIGUEZ
________________
Appeal No. 95-0675
Application No. 08/070,4871
________________
ON BRIEF
________________
Before KIMLIN, PAK and WARREN, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-0675
Application No. 08/070,487
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This is an appeal from the final rejection of claims 20
and 23-31, all the claims remaining in the present
application. Claim 20 is illustrative:
20. A method of making a laser beam programmable
semiconductor device, comprising the steps of:
forming a semiconductor body;
forming a shallow tank of conductivity type in said semi-
conductor body, said shallow tank being of conductivity type
opposite that of said body;
forming a first PN junction in said shallow tank; forming
a second PN junction in said shallow tank, said second PN
junction being spaced from said first PN junction; and
irradiating exclusively a programming area within one and only
one of said PN junctions with a laser beam, said PN junction
being permanently altered by the laser beam.
In addition to the admitted prior art found in
appellants' specification, the examiner relies upon the
following references in the rejection of the appealed claims:
Aswell et al. (Aswell) 4,387,503 June 14, 1983
Wills et al. (U.S. '729) 5,008,729 Apr. 16, 1991
Aswell et al. (Aswell '184) 07/233,184 Jan. 1984
(U.S. patent application)
Willis et al. (Japanese '654) 61-81654 Apr. 25, 1986
(Japanese Kokai application)
Appellants' claimed invention is directed to a method of
making a laser beam programmable semiconductor device wherein
damage produced by the laser beam causes a PN junction to be
Appeal No. 95-0675
Application No. 08/070,487
Since there is general agreement between the examiner2
and appellants that Japanese '654, U.S. '729 and the abandoned
application provide identical disclosures, we will limit our
discussion to U.S. '729.
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permanently altered. The method includes forming first and
second PN junctions in a shallow tank of conductivity opposite
that of the semiconductor body, "and irradiating exclusively a
programming area within one and only one of said PN junctions
with a laser beam."
Appealed claims 20 and 23-31 stand rejected under
35 U.S.C. § 102(b) as being clearly anticipated by Japanese
'654 (equivalent to U.S. '729) and under 35 U.S.C. § 102(c)
and (g) as being anticipated by U.S. Application 07/233,184,
now abandoned. Claims 20 and 23-31 also stand rejected under2
35 U.S.C. § 103 as being unpatentable over Aswell in view of
the admitted prior art.
Upon careful consideration of the opposing arguments
presented on appeal, we will not sustain the examiner's
rejections. Our reasoning follows.
We consider first the rejection of the appealed claims
under § 102 over U.S. '729. The examiner relies upon Figures
4 and 5 of the reference for depiction of laser irradiating
Appeal No. 95-0675
Application No. 08/070,487
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programming area 25 between PN junctions 14a and 14b.
However, the appealed claims require the exclusive irradiation
within one and only one of the two PN junctions, and we agree
with appellants that the reference does not describe such
within the meaning of § 102. The examiner reasons at page 6
of the Answer that "'irradiating exclusively a programming
area within one and only one of said PN junctions' does not
preclude irradiation of a second programming area containing a
second PN junction," as in the case of the reference where two
PN junctions are irradiated. However, although the
"comprising" language of the appealed claims "opens" the
claims to a second irradiation step, the claims nevertheless
require that the recited irradiation step be performed
exclusively within one and only one of said PN junctions.
Inasmuch as the reference irradiation exposes two PN
junctions, 14a and 14b, the claim requirement is not described
by the reference.
We now turn to the examiner's § 103 rejection of the
appealed claims over Aswell in view of the admitted prior art.
Aswell discloses programming a semiconductor device by
damaging an area with a laser. However, Aswell does not teach
Appeal No. 95-0675
Application No. 08/070,487
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or suggest a semiconductor device comprising a shallow tank of
opposite conductivity to the semiconductor body wherein the
shallow tank contains first and second PN junctions. Figure 1
of the present specification, the admitted prior art relied
upon by the examiner, depicts a shallow tank formed in a
semiconductor body having first and second PN junctions.
However, there is no teaching or suggestion in the admitted
prior art of irradiating a programming area within one of the
PN junctions. Hence, since there is no teaching or suggestion
in either Aswell or the admitted prior art, considered
singularly or collectively, to modify Aswell by providing a
shallow tank comprising first and second PN junctions, or of
submitting the device of the admitted prior art to the claimed
exclusive irradiation of a programming area within one and
only one of the PN junctions, we must conclude that the
examiner's legal conclusion of obviousness is based upon an
impermissible hindsight of appellants' specification.
Accordingly, we will not sustain the examiner's § 103
rejection.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
Appeal No. 95-0675
Application No. 08/070,487
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REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
Texas Instruments Inc.
P.O. Box 655474 M/S 219
Dallas, TX 75265