Appeal No. 96-0176
Application 08/012,556
We affirm the ground of rejection under ' 102(b) and reverse the ground of rejection under '
103.4
Rather than reiterate the respective positions advanced by the examiner and appellant, we refer
to the examiner=s answer and to appellant=s principal and supplemental reply briefs for a complete
exposition thereof.5
Opinion
The principal issue with respect to both grounds of rejection is the construction to be made of
the method step of Aredistributing atoms on said surface@ of the off-axis, substantially flat surfaced
single crystal ceramic substrate, in order to Aproduce surface steps of at least three lattice spacings,@
as in method step (b) of claim 1, with said Aat least three lattice spacings@ being further Aparallel to at
least two crystallographic directions@ in method step (c) of claim 28. We are mindful that we must give
the broadest reasonable interpretation to this claim language consistent with appellant's specification as
it would be interpreted by one of ordinary skill in this art. In re Morris, 127 F.3d 1048, 1054-55, 44
USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989). It is disclosed in the specification that the Aredistribution [of atoms] can occur by
many processes including,@ inter alia, Aannealing at high temperatures@ (specification, page 9, line 24,
6
to page 10, line 2). It is further disclosed in the Apreferred@ embodiment that the cut and polished,
4We noted above that the examiner withdrew the ground of rejection of claims 13 and 15 under 35
U.S.C. ' 112, first paragraph, in the supplemental examiner=s answer (see supra p. 1). The examiner
did not maintain on appeal the ground of rejection of claim 29 under 35 U.S.C. ' 112, second
paragraph (answer, Paper No. 8; page 5).
5The supplemental answer repeats the content of the answer, adding only that the ground of rejection
of claims 13 and 15 under ' 112, first paragraph, had been withdrawn. Appellant=s reply brief (Paper
No. 9) only responded to the ground of rejection under ' 112, first paragraph.
6We are not persuaded of a different construction by appellant=s notion that the effect of the
disclosure of the invention in the Asummary@ section of the specification at Apage 9, line 24-page 10,
line 2@ is one of Aallegation@ that is Anot necessarily intended to provide all of the details that would
produce the steps of the claimed invention at page 14, line 6, et seq,@ and that the AExaminer has
never shown that this allegation alone, presuming arguendo it was true, would produce the redistributed
atoms on the surface to produce steps@ having the characteristics specified in the claims (supplemental
reply brief, page 2). If, indeed, appellant is disclaiming the clear disclosure at Apage 9, line 24-page
10, line 2,@ then this matter should be considered with respect to the provisions of 35 U.S.C. ' 112,
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