Appeal No. 95-3455
Application 07/945,902
the steps recited in step "(d)" of claim 6 are not described
in appellants' original disclosure. Nor has the examiner
factually established that a person of ordinary skill in the
art of semiconductor manufacture would have been unable to
practice appellants' process described in claim 6 without
resort to "undue" experimentation. Accordingly, we reverse
the rejection under 35 U.S.C. § 112, first paragraph.
Our review of the Section 112 issue has left us with the
impression that the examiner's rejection of claim 6 could have
properly been founded on the second paragraph of Section 112
and that such a rejection could have been sustained.
Nevertheless, we are mindful that appellants have filed an
amendment to claim 6 which, in our view, removes all issues
under Section 112 with respect to claim 6. Thus, we exercise
our authority under
37 C.F.R. § 1.196(c) and direct the examiner to enter
appellants' amendment filed on July 6, 1994 (Paper Number 9).
THE REJECTION UNDER 35 U.S.C. § 103
It is by now fundamental that when rejecting the subject
matter claimed by an appellant under 35 U.S.C. § 103 the
examiner is charged with the initial burden of making out a
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