Appeal No. 2000-0937
Application 08/959,620
additional element. The examiner does not address this
particular argument in the answer as noted by appellant in the
reply brief.
We will not sustain the rejection of claims 23-32 because
the examiner has failed to establish a prima facie case of
anticipation. The first step in analyzing the propriety of a
rejection based on prior art is to ascertain the scope of the
claims. As noted above, claims 23-27 recite a device “consisting
of” a plurality of components while claims 28-32 recite a device
“consisting essentially of” a plurality of components. The
phrase “consisting of” means that no other components can be
present in the prior art structure. The phrase “consisting
essentially of” means that no other components can be present in
the prior art structure unless they are not material to the
operation of the prior art structure. The examiner has not
considered the scope of either of these phrases.
Sudo has the elements recited in claims 23-32, but the
capacitor in Sudo also appears to require a second upper
electrode of the capacitor made from monocrystalline silicon.
Appellant argues that this additional element in the Sudo
capacitor precludes Sudo from meeting the transitional phrases
“consisting of” and “consisting essentially of” as used in claims
-6-
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