Appeal No. 94-0166 Application No. 07/815,316 DESCRIPTION REQUIREMENT The examiner has rejected claims 1 through 5 under 35 U.S.C. § 112, first paragraph, as being based upon a disclosure which fails to satisfy the description requirement of that paragraph. At issue is whether the recitation “depositing a layer of conformal dielectric, said layer contacting at least a portion of said gate electrodes” in claim 1 is described in the disclosure as originally filed within the meaning of 35 U.S.C. § 112, first paragraph. It appears to be the examiner’s position* that the conformal dielectric layer contacts only insulation layers 11 and 9 as shown in Figure 1 and does not contact at least a portion of said gate electrode. See Answer, page 5. Thus, the examiner concludes that the recitation in question is not described in the disclosure as originally filed. See Answer, pages 4 and 5. We initially note that the description requirement found in the first paragraph of 35 U.S.C. § 112 is separate from the enablement requirement of that provision. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561-63, 19 USPQ2d 1111, 1115-17 (Fed. Cir. 1991); In re Barker, 559 F.2d 588, 591, 194 USPQ 470, 472 * We say “appears to be the examiner’s position” because the examiner’s Response to argument in the final two pages of the Answer is difficult to comprehend. 6Page: Previous 1 2 3 4 5 6 7 8 9 10 NextLast modified: November 3, 2007