Appeal No. 2003-1263
Application No. 09/068,999
OPINION
We have carefully considered the entire record before us, and
we will reverse the anticipation rejection of claims 2, 4, 5, 15
and 21. On the other hand, a new ground of rejection is entered
infra under 37 CFR § 1.196(b) because of the indefiniteness of
claims 2, 4, 5, 15 and 21.
Anticipation is only established when a single prior art
reference discloses every limitation of the claimed invention,
either explicitly or inherently. Glaxo Inc. v. Novopharm Ltd., 52
F.3d 1043, 1047, 34 USPQ2d 1565, 1567 (Fed. Cir.), cert. denied,
516 U.S. 3378 (1995). The examiner is of the opinion (final
rejection, page 2) that Nishizawa discloses all of the limitations
of claims 2, 4, 5, 15 and 21. Appellants argue (brief, pages 6
through 8) that the joint in the spacing 20 between the first part
14 and the second part 14 formed in the substrate 13 in Nishizawa
(Figure 1d) is comprised of an insulator 30, a semiconductor 40 and
an insulator 30 as opposed to “at least one joint of insulating
material” as claimed, and that the presence of the underlying
layers of insulation material 12 and semiconductor material 11
means that the noted joint in Nishizawa does not provide “the only
mechanical link between said first and second parts” as claimed.
In response, the examiner acknowledges (answer, pages 3 through 5)
3
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