Appeal No. 1998-2956
Application No. 08/709,964
invention from the isolated teachings of the prior art. See, e.g., Grain Processing Corp.
v. American Maize-Products Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir.
1988).
Further, as pointed out by our reviewing court, we must first determine the scope of
the claim. "[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d 1362,1369,
47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Therefore, we look to the limitations set forth in
claim 20. Here appellants argue that the pillar capacitors of Inoue are expressly aluminum
based. (See brief at pages 4-6.) We agree with appellants. The examiner relies upon
prior art Figure 9 of Inoue with respect to fin-shaped capacitors and the use of polysilicon
for the electrodes. (See answer at page 3.) The examiner also relies upon the pillar
capacitors of Inoue as shown in Figures 20A-20H. The examiner stated that the rationale
for the combination was increased durability, small size with large capacity. (See answer
at page 4.) We disagree with the examiner. These benefits are disclosed in column 4 as
the result of the aluminum base pillar shown in Figures 20A-20H.
Appellants argue that Inoue teaches a structure substantially different from
appellants’ invention which contains a polysilicon pillar and a different interelectrode
dielectric. (See brief at page 5.) While the specific details of the dielectric are not recited
in the claims, we agree with appellants that there would be more than a mere substitution
of polysilicon for the aluminum as the examiner maintains. We find this especially the case
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