Appeal No. 94-0166
Application No. 07/815,316
DESCRIPTION REQUIREMENT
The examiner has rejected claims 1 through 5 under 35 U.S.C.
§ 112, first paragraph, as being based upon a disclosure which
fails to satisfy the description requirement of that paragraph.
At issue is whether the recitation “depositing a layer of
conformal dielectric, said layer contacting at least a portion of
said gate electrodes” in claim 1 is described in the disclosure
as originally filed within the meaning of 35 U.S.C. § 112, first
paragraph. It appears to be the examiner’s position* that the
conformal dielectric layer contacts only insulation layers 11 and
9 as shown in Figure 1 and does not contact at least a portion of
said gate electrode. See Answer, page 5. Thus, the examiner
concludes that the recitation in question is not described in the
disclosure as originally filed. See Answer, pages 4 and 5.
We initially note that the description requirement found in
the first paragraph of 35 U.S.C. § 112 is separate from the
enablement requirement of that provision. See Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1561-63, 19 USPQ2d 1111, 1115-17 (Fed.
Cir. 1991); In re Barker, 559 F.2d 588, 591, 194 USPQ 470, 472
* We say “appears to be the examiner’s position” because the
examiner’s Response to argument in the final two pages of the
Answer is difficult to comprehend.
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