Appeal No. 1997-1808 Page 7
Application No. 08/172,101
the Examiner argues limits Appellants’ permissible claim scope. Appellants also argue that the use of
the phraseology “an aspect of the present invention” at page 8, lines 4-10 and page 12, lines 6-12 also
indicates that a more generic invention was being conveyed (Brief, pages 13-14 and 21). Furthermore,
Appellants also argue that the disclosure describes various embodiments including forming isolation
grooves as shown in Figure 13 at 25 (Brief, page 21). Appellants conclude that, taking the original
disclosure as a whole, the description is not so limiting as alleged by the Examiner (Brief, page 21).
However, upon our review of the facts, we do not find that the disclosure describes embodiments
broad enough to encompass the present claims. We note that the “other embodiments” referred to by
Appellants are not described as involving the claimed step of etching a second film so as to embed the
second film in the groove. The only embodiments meeting that claim limitation are specifically disclosed
as using poly-Si as the first layer and thermally oxidizing to form a silicon dioxide etch stop layer.
Appellants argue that depositing various conductive films, such as aluminum, on semiconductors
to make memory cells and using various insulating films in semiconductive devices was well known as of
the effective filing date. Appellants submit that one of ordinary skill in the art, reading the disclosure of
pages 19-21 of the Specification describing how to provide a flat surface over a filled groove,
especially in combination with Fig. 19, would have known that the present invention is as broad as that
presently claimed. (Brief, pages 15 and 17; Reply Brief, page 3). Appellants are applying the wrong
test. The test is not whether one of ordinary skill in the art would find the invention obvious after
reading the disclosure, it is whether the disclosure itself conveys that Appellants had possession of the
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