Ex parte KAWASAKI et al. - Page 10




          Appeal No. 1998-3043                                                         
          Application 08/667,587                                                       

          examiner, i.e., In re Pearson, 494 F.2d 1399, 181 USPQ 641                   
          (CCPA 1974) and Ex parte Minks, 169 USPQ 120 (Bd. App. 1971),                
          are not apposite, since the functions at issue there pertain                 
          only to the general field of intended use of the invention and               
          do not help to define the structure of the claimed apparatus                 
          or compound.                                                                 
               The examiner cites (answer at 3) to Tanaka’s floating                   
          gate electrode [4] and control gate electrode 9 as the                       
          appellants’ claimed field-shield isolation structure, but                    
          makes no attempt to explain how these two elements serve to                  
          provide field-shield isolation of separate circuit elements                  
          within a common region on the semiconductor substrate.                       
          Evidently, as is pointed out by the appellants, these                        
          electrodes are not a part of any isolation structure but are                 
          themselves a part of the circuit elements a field-shield                     
          isolation structure is supposed to isolate.  The fact that a                 
          field-shield isolation structure may include an electrode over               
          an oxide film does not make any electrode over an oxide film a               
          field-shield isolation structure.  The examiner has nowhere                  
          accounted for the isolation property of the field-shield                     
          isolation structure and thus improperly ignored a very                       

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