Appeal No. 1999-2512
Application No. 08/888,499
38, except when microwaves are supplied the term refers to the
plasma creation chamber where no deposition takes place. Id.
As correctly argued by appellants, parallel plate reactors and
ECR chambers were well known in the art at the time of the present
invention (Brief, page 5; Reply Brief, page 2). The examiner has
not met the initial burden of establishing that one of ordinary
skill in this art would not have been apprised of the scope of the
claimed term "forming a plasm in said chamber." We determine that
one of ordinary skill would have known where the plasma was formed
depending on the power source, as taught by appellants'
specification (pages 7-9 and 11-13). Similarly, with regard to
enablement, the examiner has not found any underlying factual
criteria that would support a conclusion of lack of enabling
disclosure. See In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510,
1513 (Fed. Cir. 1993); In re Wands, 858 F.2d 731, 735, 8 USPQ2d
1400, 1404 (Fed. Cir. 1988). The examiner has failed to show that
one of ordinary skill in this art would not know how to make and
use the invention from appellants' original disclosure, regardless
of the terms employed to denote where the plasma is created or
deposited.
With regard to the rejection based on the "written
description" requirement of section 112 (Answer, page 7), the
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