Ex Parte Wang et al - Page 12

                  Appeal 2007-2510                                                                                         
                  Application 10/389,456                                                                                   
             1    with any analysis of the disclosure in the Economikos specification or the                               
             2    skill and knowledge of the ordinary worker.                                                              
             3           Wang responds to this aspect of the Examiner's argument by pointing                               
             4    out that Economikos claim 1 recites that the bottom of the trench is "covered                            
             5    by"—not "in contact with"—the semiconductor substrate.  Moreover,                                        
             6    according to Wang, the silence of the broad claim as to silicon nitride "is not                          
             7    the same as teaching or suggesting that the layer to be oxidized is in contact                           
             8    with the substrate."  (FF 16; Br. at 12.)                                                                
             9           The Examiner does not respond with any substantive discussion of the                              
           10     disclosure of Economikos or of the state and knowledge of the art that would                             
           11     illuminate how one skilled in the art would have regarded the language of                                
           12     Economikos claim 1.  Accordingly, we are provided with no findings of fact                               
           13     to assess and thus no basis to review the Examiner's conclusions.  Support                               
           14     for what Economikos would have conveyed to the ordinary worker must be                                   
           15     specified before conclusions drawn therefrom can be reviewed.  That                                      
           16     process should be conducted, in the first instance, by those who are familiar                            
           17     with the art as a whole.                                                                                 
           18            The Examiner and Wang may wish to consider, in addition to claim 1,                               
           19     claims 2 and 3, which depend from claim 1, and which recite the presence of                              
           20     a silicon nitride layer.  Figure 3 and associated specification text at 4:35-50,                         
           21     which describe the results of a calculation of oxidation of α-silicon in a                               
           22     trench without a lining of silicon nitride may also be informative.  We                                  
           23     decline to make findings of fact as to what weight these factors ought to be                             
           24     given based on the present undeveloped record.                                                           



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