Appeal No. 1999-0874
Application 08/726,733
We have reviewed and considered the examiner’s reasons in support of the
rejection, but are not convinced that the cited claims fail to comply with the second
paragraph of 35 U.S.C. § 112. The examiner’s view is first expressed at page 4 of the
answer that it is not clear from the figures that the claimed "first insulating layer" is
formed on the first conductive layer. As amplified at page 6 of the answer, the
examiner considers the term "on" to mean direct contact. The examiner thus concludes
from the figures there is no direct contact between the first insulating layer (9,10) and
the conductive layers (4).
The examiner’s views expressed in the answer are not consistent with the
disclosed invention in accordance with the correlation by appellants in Exhibit A to the
principal brief on appeal showing representative corresponding structural elements for
each element claimed in independent claims 1 and 7 on appeal and the discussion
beginning at page 24 of the specification as filed. Therefore, in accordance with the
above noted case law, the artisan would not construe the questioned claim language in
the manner consistent with the examiner’s view that the use of word "on" requires direct
contact in this case. Not only do we understand the artisan would view this term as
permitting an intermediate insulation layer 5 between the identified first insulating layer
(paired layers 9 and 10), but also from our own understanding of the integrated circuit
art, the artisan would not so construe the claim as necessarily requiring the recited
element be placed directly on another element. This later view is consistent with the
4
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