Appeal No. 1998-2329
Application No. 08/740,402
A. The Rejection under 35 U.S.C. § 112, ¶1
The examiner finds that the claims contain subject matter
which was not described in the specification in such a way as to
reasonably convey to one skilled in the art that the inventors
had possession of the subject matter in question, namely the
average stress and range of stresses as recited in claim 1 on
appeal (Answer, page 4). The examiner recognizes that the
specific stress values claimed are exemplified for a specific
case found on page 10 of the specification but states that there
is nothing in the specification to suggest that this specific
value would apply to all cases (id.).
Appellants argue that the example on page 10, lines 12-28,
of the specification essentially defines the “reduced stress”
limitation of the original claims and thus claim 1 on appeal has
been limited to a hard mask layer similar to that described on
page 10 of the specification (Brief, pages 7-8).
The initial burden of proof is on the examiner to establish
that the specification fails to reasonably convey to one of
ordinary skill in the art that appellants had possession of the
subject matter in question. See Vas-Cath Inc. v. Mahurkar, 935
3
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