Takeaway: The Board affirmed a written description rejection by adopting the Examiner's claim construction, in which "height" of a layer was interpreted as a thickness. The Applicant's arguments against the written description rejection relied on a different interpretation.
Details:
Ex parte Jung
Appeal 2009-008540, Appl. No. 11/019,3151, Tech. Center 2800
January 8, 2011
The claims were directed to a method of semiconductor fabrication. The Examiner issued a written description rejection for this claim limitation:
forming a tunnel oxide layer on the active area of the semiconductor substrate such that a height of the tunnel oxide layer is not lower than a height of the trench isolation layer;In response, the Applicant relied solely on drawings rather than the specification to show possession. The Applicant argued that Figure 7 disclosed "a height of the tunnel layer [210] is not lower than a height of the trench isolation layer [204]."
(Emphasis added.)
In the next Office Action, the Examiner asserted that Figure 7 did not support the limitation at issue, and used an annotated Figure 7 to explain why:
According to the Examiner, Figure 7 showed the height of the tunnel oxide layer as being lower than the height of the trench isolation layer, which is the opposite of what was claimed.
The Applicant appealed, but the Appeal Brief did not address the Examiner's implicit interpretation of of "height".
In the Answer, the Examiner made his claim construction explicit, asserting that the plain meaning of "height" is "the distance from the base of something to the top."
The Board noted that the specification did not discuss relative heights of the layers, and did not define the term "height". The Board agreed with the Examiner's reading of Figure 7 and affirmed the written description rejection.
My two cents: Though the Board never referred to claim construction or broadest reasonable interpretation, it's pretty easy to figure out that a) the meaning of "height" is dispositive here and b) the Examiner was interpreting "height" of a layer to mean "thickness" of the layer, rather than the position of the layer relative to the bottom of the substrate (altitude?).
The Applicant should have either argued against this construction in the Appeal Brief. Or not even appealed in the first place. The last Office Action before the Notice of Appeal was non-final, so no RCE was necessary to make a clarifying amendment.
I haven't thought too much about it, but something like this?
heightposition of the tunnel oxide layer is not lower than aheightposition of the trench isolation layer, relative to the semiconductor substrate"
My 2 cents, your "position" is indefinite.
ReplyDeleteI would use something like "an uppermost point of TOL is not lower than an uppermost point of the TIL, as measured perpendicularly relative to a plane defined by the semiconductor substrate."
With that language there is still a possible question as to what direction is up, but I would take my chances on it.
This is tricky type of language and from where I'm sitting, too many practitioners don't think out thoroughly the possible ramifications of their language and how it can be interpreted.
Of course, both the Examiner and the BPAI did help matters. It doesn't help Applicant when the Examiner doesn't present a claim construction until the Examiner's Answer. Differences in claim construction underlay many disagreements between Examiner and Applicant during patent prosecution. However, it is rare that an Examiner actually makes a claim construction during an initial Office Action.
FYI – clarifying amendments are nice, but the Examiner first needs to present a position as to why the language is unclear (e.g., a claim construction that differs from the claim construction presented by Applicant).
>My 2 cents, your "position" is indefinite.
ReplyDelete>I would use something like ...
Thanks for your input. Your language is certainly more definite than mine.
>too many practitioners don't think out
>thoroughly the possible ramifications of their
>language and how it can be interpreted.
Amen to that. My new mantra is "prosecution is more about claim construction than what the references teach."
>the Examiner doesn't present a claim
>construction until the Examiner's Answer.
It's true that the Examiner didn't present an explicit claim construction until the Answer. On the other hand, the last Office Action before appeal included the annotated drawing, from which the Applicant could infer which interpretation the Examiner was using.
The way I see it, the fact that Examiners aren't required to put an explicit claim construction on the record is all the more reason to dig into every clue the Examiner gives you to figure out what he could be thinking. We can argue all day about what Examiners "should" do, and even what "the law" requires them to do, but moving the case forward sometimes means that an Applicant has to say more on the record than is otherwise desirable.
"height" — "the distance between the bottom and top surfaces of an object or between the lowest and highest points of a cognizable portion of an object." Messer v. Ho Sports Co., Inc.
ReplyDeletePerhaps both sides were right.
>Perhaps both sides were right.
ReplyDeleteI don't think the Examiner's interpretation is ridiculous. I do think the Applicant has the "best" construction. [Based solely on arguments in the record; I haven't read the spec.] I'm not sure where I come out on broadest *reasonable* interpretation.
If both sides are right, maybe that brings up another issue: is the claim on appeal indefinite?
I can't believe anyone would appeal this. Like you and others said, the fixes available are emminently apparent and the construction utilized for the rejection is plainly reasonable, if not blatantly the correct interpretation.
ReplyDelete"It doesn't help Applicant when the Examiner doesn't present a claim construction until the Examiner's Answer."
It doesn't help examiners when applicants don't know what is going on enough to ask for a claim construction. It doesn't take a rocket genius to see what was going on in this case, if they missed the blatantly present interpretation of their own claim it is only their fault.
" I do think the Applicant has the "best" construction. "
He applicant's interpretation of "height" the "best" or even worse, "the only/broadest reasonable interpretation" would be far reaching and would impact more than this ridiculous case.
"If both sides are right, maybe that brings up another issue: is the claim on appeal indefinite? "
It would be, except both sides aren't right. Notably, this is because you guys think the second part of that definition would change the case if applied. It doesn't. The distance between the lowest and highest points of the cognizable portion of the trench isolation is the same as the distance between the bottom and top surfaces of the trench isolation, and the same for the tunnel insulator.
The definition you guys are looking for in terms of "height" is:
b. Elevation above a given level, as of the sun or a star above the horizon; altitude.
Where you're taking the position that it is the bottom part of the substrate that is off the page to be the base from which the altitude is measured. A ridiculous interpretation.
There's nothing to see here but an attorney who is new to this art or an unreasonable applicant who doesn't know jack about patents. Probably the former.
Note also who the examiner's former SPE was and where that fella is now.
>Where you're taking the position that it is
ReplyDelete>the bottom part of the substrate that is off
>the page to be the base from which the
>altitude is measured. A ridiculous >interpretation.
That was my thinking, yes.
You've spent way more time thinking through this than I have, and you've convinced me that the Applicant's position is unreasonable.
But ... the Examiner's use of "height" still bothers me because when I look at his annotated Figure, I still see "thickness" rather than "height".
If both sides have a reasonable construction, is the claim indefinite?
If both sides have an unreasonable construction, does the BPAI figure out the broadest reasonable construction on its own, and decide on that basis?
"But ... the Examiner's use of "height" still bothers me because when I look at his annotated Figure, I still see "thickness" rather than "height". "
ReplyDeleteGuess what sister? In this art the thickness is the height unless they specifically come in and say "the height above x feature" or similar. All the time, everytime. Literally.
For some reason my previous post got a part knocked out. In any event, you'll note that we don't see the backside of the substrate, and that is why he literally cannot have WD for this claim. He is, as you might say, foreclosed from having WD for this claim, or any other claim with modified language which would encompass the exact same subject matter. That and he didn't mention anything about it in the spec, but he's trying to rely on his drawings.
"If both sides have a reasonable construction, is the claim indefinite? "
If they differ in substance. And especially if it is becomming an issue. I believe you yourself wrote an article about Ex Parte Miyazaki. Remember though, if neither side brings up their construction on the record then they can have outrageous beliefs all they want and nobody cares.
And also, like I said, this case is not a case of indefiniteness, it is a case of the applicant trying to use an unreasonable interpretation of a word to sneak in some new matter. Or plain ol incompetence.
"If both sides have an unreasonable construction, does the BPAI figure out the broadest reasonable construction on its own, and decide on that basis? "
Good question. I imagine it does. The CAFC does, I've seen it happen in some cases.
Like I said, nothing to see here.
>Guess what sister? In this art the thickness
ReplyDelete>is the height unless they specifically come
>in and say "the height above x feature" or
>similar. All the time, everytime. Literally.
I don't work much in this art, so I'll defer to your expertise on this point.
"Note also who the examiner's former SPE was and where that fella is now."
ReplyDeleteSo.