Appeal No. 2001-2461
Application No. 08/855,059
We affirm the rejection under 35 U.S.C. § 112, first
paragraph, but reverse both rejections under 35 U.S.C. § 103(a).2
Rejection under 35 U.S.C. § 112, ¶ 1
The examiner’s basic position is that the specification, as
originally filed, lacks adequate written description for the
invention recited in appealed claim 1. (Answer, pages 4-5.)
Specifically, the examiner held that the originally filed
specification does not support the limitation “wherein said
wetting layer or barrier layer or combination of wetting and
barrier layers does not include CVD copper.” We agree with the
examiner’s ultimate conclusion.
To satisfy the written description requirement of 35 U.S.C.
§ 112, first paragraph, the disclosure of the application as
originally filed must reasonably convey to those skilled in the
relevant art that the applicants, as of the filing date of the
original application, had possession of the claimed invention.
In re Alton, 76 F.3d 1168, 1172, 37 USPQ2d 1578, 1581; In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983). The applicants, however, do not have to describe exactly
2 In the final Office action (p. 2), the examiner also
objected to the specification under 35 U.S.C. § 132. However,
our jurisdiction under 35 U.S.C. § 134 is limited to review of
rejections. Moreover, it appears to us that the dispositive
issue raised by this objection is the same as that raised in the
rejection under 35 U.S.C. § 112, first paragraph.
4
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