Appeal No. 2003-1556
Application 09/288,932
OPINION
We reverse the aforementioned rejection. We need to address
only the independent claims, i.e., claims 1 and 6.
The appellant’s claims 1 and 6 both require a removable
spacer layer which is over an insulator layer, has an enhanced
etching selectivity in relation to the insulator layer, and is
adapted to be completely removed when isotropically etched.
The examiner argues, in reliance upon In re Hutchinson,
154 F.2d 135, 69 USPQ 138 (CCPA 1946), that “adapted to” does not
constitute a limitation in any patentable sense (answer, page 7).
In Hutchinson the court did not consider the preamble phrase
“adapted for use in the fabrication of a metal template or the
like” to “constitute a limitation in any patentable sense”. See
Hutchinson, 154 F.2d at 138, 69 USPQ at 141. In the present
case, in contrast, “adapted to” imposes a capability requirement
on the removable spacer, i.e., it must be completely removable
when isotropically etched.
The examiner argues that the appellant’s “isotropically
etched” limitation is a method limitation in a product-by-process
claim and, therefore, is given no patentable weight in
determining the patentability of the final device structure
(answer, pages 4-5 and 7). The appellant’s semiconductor
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