Appeal No. 2003-1365
Application No. 09/376,659
improperly combined references (brief, page 8 and reply brief,
pages 7 & 8).
The focus of the Examiner’s arguments is that the teaching
in support of the combination of the references need not be in
the initial [primary] reference (answer, page 7). The Examiner
also asserts that the reason to use the HTO film as a part of the
sidewall structure of Gardner ‘298 is present in Kokubu whereas
the prevention of charge migration into the sides of the gate
stacks can be obtained from the implicit and/or inherent
disclosure of the prior art reference (id.).
Before addressing the Examiner’s rejection based upon prior
art, it is an essential prerequisite that the claimed subject
matter be fully understood and the scope of the claims be
determined. Claim interpretation must begin with the language of
the claim itself. See Smithkline Diagnostics, Inc. v. Helena
Laboratories Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1472 (Fed.
Cir. 1988). Furthermore, the general claim interpretation
principle that limitations found only in the specification of a
patent or patent application should not be imported or read into
a claim must be followed. See In re Priest, 582 F.2d 33, 37, 199
USPQ 11, 15 (CCPA 1978). “[T]he name of the game is the claim.”
In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529
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