Appeal No. 2002-2087
Application No. 09/733,836
that appellants had possession of the now claimed subject matter.
See In re Edwards, 568 F.2d 1349, 1351-52, 196 USPQ 465, 467 (CCPA
1978). “The legal standard for definiteness [under section 112,
¶2] is whether a claim reasonably apprises those of skill in the
art of its scope. [Citations omitted].” In re Warmerdam, 33 F.3d
1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994).
We determine that the examiner has not met this initial burden
for either rejection under the first or second paragraphs of
section 112. Regarding the examiner’s rejection under the second
paragraph, the specification and drawing clearly shows how a trench
can be formed over and into a substrate (specification, page 5, ll.
29-30, and Figure 1). The examiner has failed to establish that a
trench cannot be “by definition” formed on the surface of the
substrate, with no evidence of any “definition” on this record. As
correctly argued by appellants (Reply Brief, pages 5-6), the
applied prior art in this appeal establishes that STIs can be
formed over the substrate. With regard to the rejection under the
first paragraph of section 112, the examiner’s statement that there
is no support for source and drain contact structures extending
through the STI “as recited in claims 9 and 13" is incorrect
(Answer, page 4). Claim 9 on appeal recites that the source and
drain contact structures are formed on the STI and extend through
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