Appeal No. 2003-1310
Application No. 09/761,738
See In re Hyatt, 708 F.2d 712, 715, 218 USPQ 195, 197 (Fed. Cir.
1983) citing In re Borkowski, 422 F.2d 904, 909, 164 USPQ 642,
645-46 (CCPA 1970).
Upon a careful review of the claim language and the
specification, we find that the claimed term “intellectual
property” clearly refers to a large number of circuit elements
integrated into a single semiconductor chip as a component of a
larger functional circuit. It is clear from the specification as
a whole, and page 34 specifically, that a mask pattern of each IP
constituting the entire circuitry is generated and transferred to
a predetermined position of the semiconductor chip. The
specification on page 35 also provides for an arrangement for
positioning the mask patterns by using superposition marks around
mask patterns that are to be placed in their corresponding
positions on the semiconductor chip where the pattern in to be
transferred.
In view of the above and in light of the specification as a
whole, we find that the term “intellectual property” is
sufficiently defined and would reasonably apprise those skilled
in the art of the scope of this limitation. Accordingly, we will
not sustain the rejection of claims 21-24 under the second
paragraph of 35 U.S.C. § 112.
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