Ex parte HWANG et al. - Page 7

          Appeal No. 1998-1096                                                        
          Application No. 08/415,399                                                  

               With respect to independent claim 5, the Examiner                      
          attempts to read the various claim limitations on the                       
          integrated circuit structure illustrated in Figure 8 of                     
          Cannella.  In particular, the Examiner (Final Rejection, pages              
          2-3) points to static charge shielding layer 69 described at                
          column 6, lines 33-60 of Cannella.                                          
               In response, Appellants assert that the Examiner has                   
          ignored the claim language “ . . . reduce incident thermal                  
          neutrons by a factor of about 2 or more,” improperly                        
          dismissing such language as a statement of intended use,                    
          inherent property or function.  After reviewing the arguments               
          of record, we are in agreement with Appellants’ position as                 
          stated in the Brief.  We find the Examiner’s assertion that                 
          the language in question can be disregarded when determining                
          patentability to be unfounded.  Our reviewing courts have held              
          that, in assessing patentability of a claimed invention, all                
          the claim limitations must be suggested or taught by the prior              
          art.  In re Royka, 490 F.2d 981, 983-84, 180 USPQ 580, 582                  
          (CCPA 1974).  All words in a claim must be considered in                    
          judging the patentability of that claim against the prior art.              
          In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA                  

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