Ex parte NARABU et al. - Page 11




          Appeal No. 1998-3135                                      Page 11           
          Application No. 08/789,519                                                  


          § 103, the sole issue, as indirectly advanced in the brief,                 
          and further expounded upon by appellants’ counsel during the                
          oral hearing, is whether the clause “wherein said floating                  
          diffusion region is connected only to the output gate, said                 
          first precharge gate and an output terminal” (underlining                   
          added).  The appellants assert (brief, page 5) that Itoh                    
          “employs a much different structure for accomplishing                       
          adjustment.”  The appellants further assert (brief, page 6)                 
          that “[t]he connection of three gates to the floating                       
          diffusion region instead of two gates increase the effective                
          capacitance and prevents the arrangement from attaining the                 
          highest possible sensitivity. . . .  Although the examiner                  
          has asserted that the elimination of elements would have been               
          obvious, applicants have shown that improved results can be                 
          achieved by eliminating certain structures.”  The examiner’s                
          position (answer, pages 4 and 5) is that “[o]nly diffusion                  
          region 203 is directly adjacent to the floating diffusion 205               
          [sic: 202].”                                                                
               We note at the outset that the claim term “only” defines               
          a structural limitation that must be considered when                        
          interpreting the claim.  In the appellants’ invention                       







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