Appeal No. 2000-1991
Application No. 08/587,417
Again, we refer to the disclosure, especially at pages 7-10 and
Figures 2 and 3. We find that the field oxide recited in claim 1
is indeed substantially above the part of the silicon substrate
30 in recess 38 as illustrated in Figure 2.
Rejection under 35 U.S.C. § 112, first paragraph, lack of
enablement
The test for enablement is whether one skilled in the art
could make and use the claimed invention from the disclosure
coupled with information known in th art without undue
experimentation. See United States v. Telectronics, Inc., 857
F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988) cert. denied,
109 S. Ct. 1954 (1989); In re Stephens, 529 F.2d 1343, 1345, 188
USPQ 659, 661 (CCPA 1976).
Thus, the dispositive issue is whether appellants’
disclosure, considering the level of ordinary skill in the art as
of the date of appellants’ application, would have enabled a
person of such skill to make and use appellants’ invention
without undue experimentation. The threshold step in resolving
this issue is to determine whether the examiner has met his
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