Ex parte KATOH et al. - Page 3




          Appeal No. 1999-0862                                                        
          Application 08/764,275                                                      


          for the respective details thereof.                                         




                                       OPINION                                        
               We will not sustain the rejection of claims 1 through 16               
          under 35 U.S.C. § 112, first paragraph.                                     
               The Examiner argues that Appellants’ disclosure fails to               
          teach how to place an exact number of donors atoms in precise               
          locations.  More specifically, the Examiner argues that                     
          appellants’ disclosure fails to provide an enabling disclosure              
          of how to align singular atoms in a two-dimensional plane with              
          individually closely packed spaces located under the                        
          intervening layers.                                                         
               On page 5 of the brief, Appellants argue that they have                
          clearly established on the record that one of ordinary skill                
          in the art would know how to make and/or use the invention                  
          given the originally filed disclosure, and that thus the                    
          original disclosure is enabling.  Appellants point to the                   



          by the Examiner is deemed necessary.                                        

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