Ex parte SUNAMI et al. - Page 7

               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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