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
7
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