Appeal No. 2002-2087
Application No. 09/733,836
active regions of the semiconductor device, and a trench “by
definition” can not be formed on the surface of the substrate
(Answer, page 4). Since the examiner finds that the source and
drain contact structures are not formed below the substrate
surface, the examiner determines that there is no support for
source and drain contact structures extending through the STI
(id.).
Accordingly, the examiner also finds that the claims are
indefinite under paragraph two of section 112 since it is “unclear
as to how a trench can be formed over the substrate” (Answer, page
4).
Although the examiner appears to confuse the requirements of
section 112 for written description, enablement, and definiteness,2
the initial burden of establishing unpatentability on any ground
rests with the examiner. See In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Under the written
description requirement of the first paragraph of section 112, the
examiner must establish that the originally filed disclosure would
not have reasonably conveyed to one of ordinary skill in this art
2See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19
USPQ2d 1111, 1117 (Fed. Cir. 1991); and In re Angstadt, 537 F.2d
498, 501, 190 USPQ 214, 217 (CCPA 1976).
4
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