Noyce v. Kilby
A key case from the CCPA from 1969 is Noyce v. Kilby, 416 F.2d 1391, 163 U.S.P.Q. 550 (CCPA 1969) concerning who would be granted priority for the discovery of the integrated circuit. The issue in the case was whether the Kilby application disclosed adherent electrical connections between the components of the integrated circuit. The case shows an interesting use of Webster's dictionary and is relevant to discussion of the presently pending Phillips v. AWH.
More specifically as to the Noyce case, Kilby's disclosure had the text:
--Electrically conducting material such as gold may then be laid down on the insulating material to make the necessary electrical circuit connections.--
Count 1 of the interference stated:
A semiconductor device comprising a body of semiconductor having a surface, said body containing adjacent P-type and N-type regions with a junction therebetween extending to said surface, two closely spaced contacts a [sic] adherent to said surface upon opposite sides of the adjacent to one portion of said junction, an insulating layer consisting essentially of oxide of said semiconductor on and adherent to said surface, said layer extending across a different portion of said junction, and an electrical connection to one of said contacts comprising a conductor adherent to said layer, said conductor extending from said one contact over said layer across said different portion of the junction, thereby providing electrical connections to both of the closely spaced contacts.
It was Noyce's position that Kilby's suggestion that the electrical connection be "laid down" on the insulating layer does not teach that it be "adherent" thereto and that such adherency is not otherwise taught in the '602 application.
Procedurally, Noyce's patent issued first, and Kilby had to copy from Noyce's claims. This made the difference. One copying a claim from a patent has the burden of showing that his application clearly supports the count. In determining applicant's right to make a copied claim, all limitations in the claim will be considered material and doubts arising as to such right must be resolved against the copier. Where support must be based on an inherent disclosure, it is not sufficient that a person following the disclosure might obtain the result set forth in the count; it must invariably happen. See Smith v. Wehn, 50 CCPA 1544, 318 F.2d 325, 138 USPQ 52, and Dreyfus and Harrison v. Sternau, 53 CCPA 1050, 357 F.2d 411, 149 USPQ 63. [This is the same issue as in inherent anticipation.]
More from the case.
416 F.2d at 1397:
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While that disclosure indicates that it was known in 1959 that aluminum could be deposited on an oxide layer to form the plate of a capacitor, it does not seem to us to constitute any clear suggestion that conductors interconnecting terminals of semiconductor devices should be so deposited.
The gist of the reasoning of Kilby on the point under consideration is found in the following argument in his brief:
The word "laid" (the past participle of the word "lay") has quite a large number of meanings. In addition to laying down as a carpet on a floor, there are other meanings given in Webster's International Dictionary , such as to dispose of as over a surface; as to lay a pavement; to coat. For the word "laying" the meaning is given as that of "the act of one who acts or sets, puts, places, fixes, etc."
The intention of Kilby was to describe in a very broad sense the act of making appropriate and necessary electrical connections to semiconductor devices wherein an inert and insulating material such as silicon oxide separated the electrical conductor from the semiconductor substrate. It was Kilby's purpose to describe an operative embodiment so as to teach the art the means of making necessary electrical connections in integrated circuits. The words "laid down" quite obviously mean depositing or plating by an appropriate means such as that referred to in his application in connection with the evaporation of aluminum and gold onto the same kind of substrates and same kinds of materials. The language is quite clear to one desiring to make the same kinds of electrical connections unless one deliberately intends to misunderstand. Therefore, it seems clear that an effort has been made to find a lack of teaching where none exists. Neither the Primary Examiner nor the Board of Patent Interferences had any difficulty with the language in question.
That argument embodies an inherent concession that "laid down" can cover a relationship where adherency is lacking as well as one where it exists, which fact precludes any conclusion that the term "laid down" per se meets the requirement that the claimed features must be inherently disclosed in order to find support in an application. It is also apparent that Kilby has not demonstrated that the term "laid down" had at the time of filing of the '602 application in 1959, or has since, acquired a meaning in electronic or semiconductor arts which necessarily connotes adherence. n8 The position that "laid down" means depositing or plating by means such as are referred to in the application "in connection with the evaporation of aluminum and gold onto the same kind of substrates [p. 1398] and same kinds of materials" cannot stand analysis. The disclosure in Kilby '602 of evaporating conductive metal onto a substrate of oxide relates to the forming of the plate 19 of the capacitor of Fig. 2a as discussed hereinabove. As there pointed out, that plate is an element of the capacitor and is not a conductor for making an electrical connection between circuit elements.
We do not find any suggestion in the application that would lead a person of ordinary skill in the art to interpret Kilby's discussion of a modified electrical connecting means as teaching the use of a process he discloses only for making a capacitor plate. <--
The CCPA disposed of Kilby's argument that the examiner and board found no difficulty with the concept of "laid down."
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As to Kilby's statement that neither the examiner nor the board had "any difficulty with the language in question," we do not regard the concurrence of the examiner and board to have any substantial significance in the present circumstances. The record shows merely that the examiner held that there was support in the portions of the '602 application considered here and not that he gave any reasons for his views. The analysis by which the board reached its conclusion is considered to be clearly in error for the reasons already pointed out.
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Kilby and TI lost the interference because of the construction given by the CCPA to the term "laid down" which did not inherently give rise to an "adherent" conductor.
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In summary, the best that can be said for Kilby's position with respect to the recitation in count 1 regarding a "conductor adherent" to the proposed layer of oxide and crossing a junction of the semiconductor is that there might be a possibility that one skilled in the art following the Kilby '602 application would have provided such a structure. However, we are not convinced that such person would inevitably do so or that such structure would result from the necessary and only reasonable construction of the disclosure by one skilled in the art.
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More specifically as to the Noyce case, Kilby's disclosure had the text:
--Electrically conducting material such as gold may then be laid down on the insulating material to make the necessary electrical circuit connections.--
Count 1 of the interference stated:
A semiconductor device comprising a body of semiconductor having a surface, said body containing adjacent P-type and N-type regions with a junction therebetween extending to said surface, two closely spaced contacts a [sic] adherent to said surface upon opposite sides of the adjacent to one portion of said junction, an insulating layer consisting essentially of oxide of said semiconductor on and adherent to said surface, said layer extending across a different portion of said junction, and an electrical connection to one of said contacts comprising a conductor adherent to said layer, said conductor extending from said one contact over said layer across said different portion of the junction, thereby providing electrical connections to both of the closely spaced contacts.
It was Noyce's position that Kilby's suggestion that the electrical connection be "laid down" on the insulating layer does not teach that it be "adherent" thereto and that such adherency is not otherwise taught in the '602 application.
Procedurally, Noyce's patent issued first, and Kilby had to copy from Noyce's claims. This made the difference. One copying a claim from a patent has the burden of showing that his application clearly supports the count. In determining applicant's right to make a copied claim, all limitations in the claim will be considered material and doubts arising as to such right must be resolved against the copier. Where support must be based on an inherent disclosure, it is not sufficient that a person following the disclosure might obtain the result set forth in the count; it must invariably happen. See Smith v. Wehn, 50 CCPA 1544, 318 F.2d 325, 138 USPQ 52, and Dreyfus and Harrison v. Sternau, 53 CCPA 1050, 357 F.2d 411, 149 USPQ 63. [This is the same issue as in inherent anticipation.]
More from the case.
416 F.2d at 1397:
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While that disclosure indicates that it was known in 1959 that aluminum could be deposited on an oxide layer to form the plate of a capacitor, it does not seem to us to constitute any clear suggestion that conductors interconnecting terminals of semiconductor devices should be so deposited.
The gist of the reasoning of Kilby on the point under consideration is found in the following argument in his brief:
The word "laid" (the past participle of the word "lay") has quite a large number of meanings. In addition to laying down as a carpet on a floor, there are other meanings given in Webster's International Dictionary , such as to dispose of as over a surface; as to lay a pavement; to coat. For the word "laying" the meaning is given as that of "the act of one who acts or sets, puts, places, fixes, etc."
The intention of Kilby was to describe in a very broad sense the act of making appropriate and necessary electrical connections to semiconductor devices wherein an inert and insulating material such as silicon oxide separated the electrical conductor from the semiconductor substrate. It was Kilby's purpose to describe an operative embodiment so as to teach the art the means of making necessary electrical connections in integrated circuits. The words "laid down" quite obviously mean depositing or plating by an appropriate means such as that referred to in his application in connection with the evaporation of aluminum and gold onto the same kind of substrates and same kinds of materials. The language is quite clear to one desiring to make the same kinds of electrical connections unless one deliberately intends to misunderstand. Therefore, it seems clear that an effort has been made to find a lack of teaching where none exists. Neither the Primary Examiner nor the Board of Patent Interferences had any difficulty with the language in question.
That argument embodies an inherent concession that "laid down" can cover a relationship where adherency is lacking as well as one where it exists, which fact precludes any conclusion that the term "laid down" per se meets the requirement that the claimed features must be inherently disclosed in order to find support in an application. It is also apparent that Kilby has not demonstrated that the term "laid down" had at the time of filing of the '602 application in 1959, or has since, acquired a meaning in electronic or semiconductor arts which necessarily connotes adherence. n8 The position that "laid down" means depositing or plating by means such as are referred to in the application "in connection with the evaporation of aluminum and gold onto the same kind of substrates [p. 1398] and same kinds of materials" cannot stand analysis. The disclosure in Kilby '602 of evaporating conductive metal onto a substrate of oxide relates to the forming of the plate 19 of the capacitor of Fig. 2a as discussed hereinabove. As there pointed out, that plate is an element of the capacitor and is not a conductor for making an electrical connection between circuit elements.
We do not find any suggestion in the application that would lead a person of ordinary skill in the art to interpret Kilby's discussion of a modified electrical connecting means as teaching the use of a process he discloses only for making a capacitor plate. <--
The CCPA disposed of Kilby's argument that the examiner and board found no difficulty with the concept of "laid down."
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As to Kilby's statement that neither the examiner nor the board had "any difficulty with the language in question," we do not regard the concurrence of the examiner and board to have any substantial significance in the present circumstances. The record shows merely that the examiner held that there was support in the portions of the '602 application considered here and not that he gave any reasons for his views. The analysis by which the board reached its conclusion is considered to be clearly in error for the reasons already pointed out.
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Kilby and TI lost the interference because of the construction given by the CCPA to the term "laid down" which did not inherently give rise to an "adherent" conductor.
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In summary, the best that can be said for Kilby's position with respect to the recitation in count 1 regarding a "conductor adherent" to the proposed layer of oxide and crossing a junction of the semiconductor is that there might be a possibility that one skilled in the art following the Kilby '602 application would have provided such a structure. However, we are not convinced that such person would inevitably do so or that such structure would result from the necessary and only reasonable construction of the disclosure by one skilled in the art.
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posted by Lawrence B. Ebert at 8:59 PM
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