Appeal No. 1998-0694
Application No. 08/637,009
does not suggest any critical
thickness with regard to agglomeration
[Final Rejection, page 2].
This rejection clearly relates to the written description
requirement of 35 U.S.C. § 112.
The purpose of the written description requirement is
to ensure that the applicant conveys with reasonable clarity
to those skilled in the art that they were in possession of
the invention as of the filing date of the application. For
the purposes of the written description requirement, the
invention is "whatever is now claimed." Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1564, 19 USPQ2d 1111, 1117 (Fed. Cir.
1991). Appellant points to several portions of the original
specification which are argued to support the claim recitation
that the titanium silicide film would agglomerate but for the
presence of the thermal oxide film. The examiner responds
that the original disclosure does not indicate the range of
thicknesses of such titanium silicide films which would fall
within the scope of the claims or the criticality of such
thicknesses.
We agree with the position argued by appellant, and
therefore, we do not sustain the rejection of the claims under
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