Appeal No. 1999-2347
Application 08/892,560
level of selectivity (oxide to nitride) of 10:1, so we think one
of ordinary skill in the art would have been apprised that a
"low" selective etch would be less than 10:1. An exact ratio is
not required. The rejection of claim 27 is reversed.
Declaration under 37 CFR § 1.131
Appellants filed a declaration of prior invention in the
United States (part of Paper No. 29) under 37 CFR § 1.131 to
antedate Woo. 37 CFR § 1.131(a)(1) states, in pertinent part:
When any claim of an application ... is rejected under
35 U.S.C. § 102(a) or (e), or 35 U.S.C. § 103 based on
a U.S. patent to another or others which is prior art
under 35 U.S.C. § 102(a) or (e) and which substantially
shows or describes but does not claim the same
patentable invention, as defined in § 1.601(n) ..., the
inventor of the subject matter of the rejected claim
... may submit an appropriate oath or declaration to
overcome the patent or publication. [Underlining for
emphasis.]
Thus, an oath or declaration under 37 CFR § 1.131 is precluded if
Woo claims "the same patentable invention, as defined in [37 CFR]
§ 1.601(n)" as Appellants.
"The same patentable invention" refers to whether two
inventions are the same invention in a patentability sense, i.e.,
anticipated or obvious over one another, not whether the claimed
inventions are actually patentable over the prior art. The test
for "the same patentable invention" under 37 CFR §§ 1.131
and 1.601(n) involves a determination of whether the invention
claimed in the prior art is the same patentable invention as
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