Appeal No. 2001-0570
Application No. 09/049,591
down to 300 D."1 Col. 7, ll. 25-26. Furthermore, the appellants fail to allege, let alone
show, that their specification provides any indication as to what range of specific
thickness is covered by the term "about." To the contrary, the specification uses the
term without clarification. (Specification at 5-6, ("Continue the HSG silicon growth . . .
to yield a layer of grains about 30 nm maximum thickness.")) Therefore, I would also
affirm the rejection of claim 1 as indefinite.
In closing, I commend the examiner on his treatment of claim 1. "The examiner
ordinarily should reject each claim on all valid grounds available. . . ." M.P.E.P.
§ 707(g) (8th ed. Aug. 2001). "A claim limitation which is considered indefinite cannot
be disregarded." Id. § 2143.03. More specifically, "if a claim is subject to two
interpretations . . . and one interpretation would render the claim unpatentable over the
prior art, we believe the proper course of action is for the examiner to enter two
rejections. . . ." Ex parte Ionescu, 222 USPQ 537, 540 (Bd. Pat. App. & Inter. 1984)
The first should be a rejection "based on indefiniteness under 35 U.S.C. § 112, second
paragraph," id.; the second, "a rejection over the prior art based on the interpretation of
the claims which renders the prior art applicable." Id.
1The appellants recognize that a thickness of 30 nm equals a thickness of 300 D.
(Paper No. 6 at 2.)
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