BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 EX PARTE GEORGE A. ROHRER AND LARRY D. MCMILLAN Appeal No. 89-1483

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)



Appeal No. 89-1483

September 14, 1990

HEARD: June 14, 1990



 Application for Patent filed October 31, 1985, Serial No. 06/793,186, which is a division of Serial No. 06/133,338, filed March 24, 1980, now Patent No. 4,707,897, which is a continuation-in-part of Serial No. 05/658,199, filed February 17, 1976, now Patent No. 4,195,355, which is a continuation-in-part of Serial No. 05/316,417, filed December 18, 1972, now Patent No. 3,939,292, which is a continuation-in-part of Serial No. 05/076,059, filed September 28, 1970, now Patent No. 3,728,694. Method Of Making Ferroelectric Memory.



Edward D. Manzo for appellants



Primary Examiner--Olik Chaudhuri



Before Torchin, R. Smith, Tarring, Meros and Emery












 This is an appeal from the examiner's final rejection of claims 1-18, 23, 24, 28-31 and 33-36. All of the remaining claims in the case have been withdrawn from consideration as being directed to the nonelected invention under 37 CFR 1.142(b).



 The application is directed to a method of making a ferroelectric memory device which is coupled to an integrated circuit. Claim 1 is representative:



 1. A method of fabricating a monolithic ferroelectric memory device coupled to an integrated circuit comprising the steps of:



 forming first layer interconnects coupled to the integrated circuit;



 depositing a non-semiconductor dielectric and forming interconnect and bonding pad vias therein;



 depositing a conductive layer and forming a bottom electrode;



 applying a ferroelectric layer;



 depositing a conductive layer and forming a top electrode; and



 applying conductive material to the bonding and interconnect pads.



 The examiner relied on the following references:




Shirland   3,571,915  Mar. 23, 1971

Mickelsen  3,874,922   Apr. 1, 1975

Croson     3,996,551   Dec. 7, 1976

Cook       4,149,301  Apr. 17, 1979

Cook       4,149,302  Apr. 17, 1979


Pulvari et al. (Pulvari), "A New Graded Electrode For Forming Intimate Contact With Ferroelectrics", IEEE Trans. Elec. Dev. ED-16, No. 6, pages 532-535 (June 1969).



 According to appellants' Brief, the parent of this application (Serial No. 133,338) was filed after appellants learned of the above-listed Cook patents. Appellants' parent application provoked two interferences with the two Cook patents. Interference No. 100,842 resulted in an award of priority of Counts 1-12 and 23-53 (corresponding exactly to the similarly numbered claims of Cook Patent No. 4,149,301) to Cook, and of Counts 13-22 to appellants. Interference No. 100,843 resulted in an award of priority to Cook of all counts (which corresponded exactly to the claims of Cook Patent No. 4,149,302). During these Interferences, appellants learned of an earlier Cook application (Serial No. 818,867, filed July 25, 1977). Appellants state (Brief, page 11):

    *2 The drawing of that application appears to be identical to several drawings of the present invention, and the written description is substantially similar in many areas. The claims of Cook's '867 patent application correspond to many of the claims of the present application.



 The record herein includes a copy of Cook's application Serial No. 818,867. It also includes a copy of a letter written by attorney Malcolm Wittenberg, dated March 9, 1978, wherein he reported on a meeting the previous day with Cook regarding this application. The letter states:

   The original application is broad enough to read on the McMillan proposal and does not recite Bob Cook's contribution over and above McMillan's basic concept. Therefore, in our opinion, the initial application should be allowed to go abandoned and a new application filed directed solely to Bob Cook's improvement.

Application Serial No. 818,867 was subsequently abandoned and the two applications which matured into the Cook patents herein were filed. During the above noted interferences, Cook did not claim benefits under 35 USC 120 based on the earlier filing date of Serial No. 818,867.



 The decisions in the two Interferences are of record herein. In both Interferences, appellants contended that the subject matter in issue was derived from them by Cook. Appellants, as junior party, were charged with the burden of proving beyond a reasonable doubt that they, appellants, had (1) conceived the invention, and (2) communicated the invention to Cook before any conception by Cook. Appellants relied heavily on a memorandum by McMillan, dated February 7, 1976, and the attached eight pages of Technovation notes, dated "8/1/75". The Board found that the dates of these documents are "well prior to any date alleged by Cook, who conceded that McMillan gave him a copy of the memorandum while they were both employed at AMI ... i.e., prior to October 1976 ..." (Decision, Interference Number 100,842, page 13).



 In Interference No. 100,842, the Board concluded that the appellants conceived the subject matter of counts 13 to 22 well prior to Cook's earliest alleged date of September 26, 1977 and held that Cook derived the subject matter of counts 13 to 22 from Rohrer (appellants herein).



 The Board further found that the appellants failed to provide sufficient evidence to corroborate that they were in possession of the "conductive oxide" concept prior to any alleged communication to Cook and, therefore, refused to sustain appellants' charge that Cook had derived from them the subject matter of the remaining counts, all of which included the concept of conductive oxides.



 In Interference No. 100,843, the Board held that appellants had not established conception of the subject matter of the counts therein prior to Cook's filing date. The Board held that the McMillan memorandum lacked the concept of applying a protective layer of metal between the ferroelectric layer and the top electrode, which concept was included in all of the counts therein.



  *3 In both of the interferences, the Board responded to appellants' assertions that Cook was guilty of fraud, by pointing out that Cook had cited the McMillan memorandum to the PTO in Prior Art Statements which had been filed in each of the Cook applications involved in the interferences.



 Four rejections are before us [FN1]:



 a) Claims 1-18, 23, 24, 28-31 and 33-36 stand rejected under 35 USC 112, first paragraph;



 b) Claims 1-18, 23, 24, 28-31 and 33-36 stand rejected as being unpatentable over lost counts 1-12 and 23-53 of Interference No. 100,842 or lost counts 1-14 of Interference No. 100,843 either, alone, or with either Croson or Michelson, and Pulvari or Shirland;



 c) Claims 1-18, 23, 24, 28-31 and 33-36 stand rejected on the ground of estoppel; and



 d) Claims 1-18, 23, 24, 29 and 33-36 stand rejected under 35 USC 102(e) or (g) as being anticipated by the disclosure and/or claims of either of the Cook patents.



The Rejection Under 35 USC 112.


 In this rejection the examiner held that the specification fails "to provide a description, enabling disclosure, and/or best mode for" (a) the integrated circuit (IC), (b) the step of "partially etching" the top conductive layer, as set forth in claim 24, (c) the process of claims 33-35, and (d) the recited orientations (orthogonal) of electrodes.



 We cannot sustain the examiner's rejections of claims 1-18, 23, 24 and 28-31 under 35 USC 112, first paragraph. The examiner's criticism of the specification as not providing the best mode fails to allege, much less prove, that appellants have withheld information regarding what they considered to be their best mode at the time the application was filed. In re Gay, 309 F.2d 769, 135 USPQ 311 (CCPA 1962).



 The examiner's criticism of the specification as not adequately describing and enabling the referred to integrated circuit (IC) focus on the content and method making what could be considered the starting material in appellants' process. We note that the examiner does not contend that such integrated circuits do not exist. In his Declaration, co-inventor McMillan, at paragraph 33, indicated that the present invention contemplates integrated circuits generally and is intended to coact with such by supplying information back and forth therewith. Indeed, the coaction of microprocessors, which often are integrated circuits, with memory devices is well known in the art. Accordingly, we are unable to concur with the examiner's position regarding the sufficiency of the disclosure with respect to the integrated circuit. We also note that the prior two Cook patents and the appellants' patent No. 4,707,897, based on parent application Serial No. 133,338, are all directed to similar methods involving similarly disclosed integrated circuits.



  *4 We also cannot agree with the examiner's position regarding the necessity for a specific teaching of particular reagents to enable a worker of ordinary skill to practice the invention of claims 24 and 29. The examiner does not contend that suitable etching reagents are unknown. Coinventor McMillan at paragraph 34 of his declaration states, what is otherwise well known, that chemical etches are time dependent. He further provides the logical, almost self-evident explanation, that if too little time is provided, the resulting etch is not complete, but is partial. The examiner has not commented on why this explanation is deficient.



 We further cannot agree with the examiner that the orthogonal relationship between the first electrodes and the second electrodes is not adequately described. The directional relationship between first electrodes 6 and second electrodes 11 is clearly taught in Figures 2 through 8. The examiner appears to be requiring a written description which corresponds to the claim language, in haec verba. Such is not required. In re Smith, 481 F.2d 910, 178 USPQ 620 (CCPA 1973); see also, In re Barker and Pehl, 559 F.2d 588, 194 USPQ 470 (CCPA 1977).



 We shall, however, sustain the examiner's rejection of claims 33-36 under  35 USC 112, first paragraph, as not being adequately described in the application as originally filed. These claims were added by an amendment filed October 26, 1987. The claims do not recite a method for forming a monolithic ferroelectric memory device coupled to an integrated circuit, rather they recite a memory device coupled to an integrated circuit by interconnects. The original specification and the original title clearly disclosed appellants' invention to involve the preparation of a monolithic integrated circuit ferroelectric memory device. Specifically, we note page 2, line 25 through page 3, line 28; each of the recited objects at pages 3 and 4; and the broad description of the invention at pages 4 and 5. We particularly note the comparison at page 4:

   "it has been found that the speed of the monolithic structure is improved as compared to an individual semiconductor integrated circuit and a separate memory device in conventional form."

and prior teachings at page 1 and 2, regarding the Background of the Invention, that recent breakthroughs had developed devices using ferroelectric potassium nitrate which are particularly useful as computer memory cells and that such multilayered devices, including those with metal layers, are usually fabricated by high vacuum deposition techniques. Claim 33, for example, appears to recite the method of preparing the conceded prior art ferroelectric memory device merely electrically connected to an integrated circuit, which could be a separate IC located in the next state, all in accord with appellants' teaching at page 4 of an individual semiconductor IC and a separate memory device in conventional form. The tenor of the specification's description is that the invention involves a monolithic IC-memory structure and a method of making such. These claims are not in accord with such description. In re Smith, supra; In re Barker, supra.



The Remaining Rejections.



  *5 We shall not sustain the examiner's various rejections which rely upon the Cook patents and/or the previous interferences with Cook. We do not consider the present situation to be one wherein the appellants' are estopped from pursuing claims which are broader than those lost in the preceding interferences. The decision that Cook derived the subject matter of Counts 13 through 22 of Interference No. 100,842 from appellants, and the established conduct of Cook in abandoning his original application, Serial No. 818,867, following the recommendations of the Wittenberg letter of March 9, 1978, and his citation of the McMillan memorandum as prior art, provides consistent evidence that Cook conceded that he derived the broader aspects of the involved process, i.e., those claimed in Serial No. 818,867 and herein, from appellants. Accordingly, we agree with appellants that the present claims were not patentable to Cook and that Cook's behavior clearly conceded that he was not the first inventor thereof. Appellants, therefore, were not obligated to propose the present claims as additional counts in the interferences. Appellants' failure to do so does not create an estoppel. Estoppels when asserted against statutory rights should never be applied based on conjectural or hypothetical premises. In re Long, 83 F.2d 458, 29 USPQ 357 (CCPA 1936).



 The McMillan declaration in conjunction with the Board decision in  Interference No. 100,842, establish that, to the extent the Cook patents describe appellants' claimed invention, such information was derived from appellants by Cook. Cook's description of these elements in his patents therefore does not relate to a time "before the invention thereof by the applicant for patent" in accord with 35 USC 102(e). To the extent the interferences were decided adverse to applicants, the counts involved were not coextensive with the present claims. Accordingly, these adverse decisions provide no basis for a conclusion that "another" made the invention "before the applicant's invention thereof" in the sense of 35 USC 102(g). To the contrary, the decision in Interference No. 100,842, held that Cook derived the invention defined by Count 18 from appellants (page 20). Comparison of Count 18 to the present independent claims 1, 6 and 11 demonstrates that Count 18 contains each of the steps defined in these claims in either identical or substantially identical terms. Accordingly, the decision that Cook derived Claim 18 from appellants, presages our present decision that, to the extent Cook describes the presently claimed invention, he derived such information from appellants and such description therefore is not evidence of an invention made by another before the applicants' invention thereof.



 To the extent that the lost count doctrine is based on principles of either estoppel or the provisions of 35 USC 102(g); see In re Kroekel, 803 F.2d 705, 231 USPQ 640 (Fed.Cir.1986); it is clear that neither the estoppel nor the statutory basis applies to the facts of this case.



  *6 The examiner's decision is affirmed with respect to claims 33-36, however it is reversed with respect to claims 1-18, 23, 24 and 28-31.



 No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).









Norman G. Torchin






Ronald H. Smith






Henry W. Tarring, II






Edward J. Meros






Stephen J. Emery






FN1. The reference to claims being copied from a U.S. patent, at page 7 of the Examiner's Answer, does not constitute a rejection, and is not treated as such herein.



November 9, 1990











 Appellants have filed a request for modification of our decision dated September 14, 1990, wherein we reversed the examiner's rejections of claims 1- 18, 23, 24, and 28-31, while affirming his rejection of claims 33-36. Appellants now request that we modify the decision to include an express recommendation that claims 33-36 be allowed if they are amended to clearly relate to a monolithic device. Appellants further request that we designate our position with respect to claim 36 to be a new ground of rejection, thereby affording appellants the right to amend the claim pursuant to 37 CFR 1.196.



 We shall grant appellants' request to the extent that we shall designate our affirmance of the rejection of claim 36 to be a new ground of rejection subject to the provisions of 37 CFR 1.196(b). While it logically follows that this claim, to the extent it does not correct the underlying problem, would be subject to the same rejection under 35 USC 112 as its parent claim, claim 33; the examiner, in stating the reasons for the rejection, always specifically referred to claims 33-35 as a group and never included claim 36 in such group. Inasmuch as our affirmance of the rejection was based upon the reasons specifically applied previously only to claims 33-35, we grant appellants' request to the extent indicated.



 We shall not, however, provide the requested recommendation that amended claims 33-35 be allowed. We note that the subject claims were not present in the originally filed case and that from the time they were submitted, they were rejected under the first paragraph of 35 USC 112. In his explanation of the reasons for the rejection, the examiner referred to the specification as relating "to the making of a monolithic memory device ...", and indicated that the description "does not describe the broad invention submitted in these claims." While the rejection could have been more clearly expressed, we find that the basis on which the rejection was sustained was provided by the examiner continuously from the entry of the claims in the case. These circumstances neither provide us with such a level of confidence that these broad claims have been adequately searched that we would recommend allowance, nor demonstrate that considerations of fairness should operate to provide appellants "another bite of the apple" with respect to these claims. Appellants had ample opportunity to provide the presently sought amendment prior to pursuing this appeal.



  *7 With respect to the rejection of claim 36, should appellants elect the alternate option under 37 CFR 1.196(b) to prosecute further before the Primary Examiner by way of amendment or showing of facts, or both, not previously of record, a shortened statutory period for making such response is hereby set to expire one month from the date of this decision. In the event appellants elect this alternate option, in order to preserve the right to seek review under 35 USC 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the examiner.



 If the appellants elect prosecution before the examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to us for final action on the affirmed rejection.



 No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).









Saul I. Serota [FN1]






Ronald H. Smith






Henry W. Tarring, II






Edward J. Meros






Stephen J. Emery






FN1. Examiner-in-Chief Torchin, who was on the panel which rendered the original decision in this case, has retired from the Board. Chairman Serota has been added to the panel in his stead.


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