Appeal No. 2001-2200
Application No. 09/286,328
films and two or more CuAl2 layers formed between the aluminum-copper alloy films
would infringe the claim. The clear language of the claim reasonably apprises those
skilled in the art of its scope. Similarly, the clear limitations may be compared to prior
art structures to evaluate patentability of the claim over the prior art structures.
Although many of the instant claims may be broad in scope due to minimal
language with respect to structural interrelationships, we do not consider the lack of
specificity to render the metes and bounds of the claims to be not reasonably
ascertainable. We do not consider the examiner's stated concerns with the claims
before us to reflect indefiniteness within the meaning of 35 U.S.C. § 112, second
paragraph, and thus do not sustain the rejection.
Section 112, first paragraph rejection
After careful study of the entirety of the '917 patent disclosure, we agree with the
examiner's determination to the extent that claims which fail to require copper film in
contact with aluminum alloy film are not supported by an enabling disclosure. See In re
Mayhew, 527 F.2d 1229, 1233, 188 USPQ 356, 358 (CCPA 1976) (claims which failed
to recite the use of a cooling zone, specially located, which the specification taught as
essential, was not supported by enabling disclosure). We turn to consider appellants'
arguments to the contrary.
Appellants argue that "[i]n the present application, there is no statement that the
copper film must remain in the final electrode." (Brief at 7.) At the oral hearing, counsel
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