Appeal No. 2003-1298
Application No. 09/369,579
surface and that Kawamura’s oxide region does not have a convex
shape. Brief, page 5. In response, the examiner first points
out that appellants’ drawings are not drawn to scale. We agree.
Most importantly, however, the examiner points out that the
field oxide of Kawamura is formed in the same manner in which
appellants’ field oxide is formed. Due to the fact that the
same process is utilized, we agree with the examiner that a
similar shapes would result, absent evidence to the contrary.
It is well settled that the Patent Office can require appellants
to prove that a function or property relied upon for novelty is
not possessed by prior art compounds otherwise meeting the
limitations of the claims. In re Best, 562 F.2d 1252, 1255, 195
USPQ 430, 433 (CCPA 1977). Here, appellants have not provided
such proof. We therefore agree with the examiner’s position on
this issue.
With regard the item (c), appellants argue that the
claimed subject matter requires first and second isolation
trenches, each with second sides that respectively make
contact with first and second active regions. Appellants
argue that Kawamura does not provide such a teaching. In
response, on page 16 of the answer, the examiner explains
that trenches 11 of Kawamura contact the regions that were
covered by resist pattern 4 (the active regions). The
examiner concludes that therefore Kawamura anticipates this
aspect of the claim. We agree. Upon our review of Figure
1(j), we agree with the examiner that Figure 1(j) shows the
a first side of trench 11 that contacts an active region,
and a second side that contacts the silicon oxide film 9.
Accordingly, we affirm each of the 35 U.S.C. § 102(b)
rejections as being anticipated by Kawamura which involve
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007