Appeal No. 2003-2130
Application 08/159,461
It is well settled that the examiner has the burden of making out a prima facie case that
the appealed claims do not comply with § 112, first paragraph, written description requirement,
by setting forth evidence or reasons why, as a matter of fact, the written description in appellant’s
disclosure would not reasonably convey to persons skilled in this art that appellant was in
possession of the invention defined by the claims, including all of the limitations thereof, at the
time the application was filed. See generally, In re Alton, 76 F.3d 1168, 1172, 1175-76,
37 USPQ2d 1578, 1581, 1583-84 (Fed. Cir. 1996), citing In re Wertheim, 541 F.2d 257, 262-64,
191 USPQ 90, 96-97 (CCPA 1976). It is further well settled that while the written description
does not have to describe the invention later claimed in haec verba, such written description
“must . . . convey with reasonable clarity to those skilled in the art that . . . [appellant] was in
possession of the invention . . . now claimed.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991); see also Purdue Pharma L.P. v. Faulding
Inc., 230 F.3d 1320, 1323, 56 USPQ2d 1481, 1483 (Fed. Cir. 2000); Wertheim, 541 F.2d at
262-65, 191 USPQ at 96-98. Thus, where “the specification contains a description of the
claimed invention, albeit not in ipsis verbis (in the identical words), then the examiner or the
Board, in order to meet the burden of proof, must provide reasons why one of ordinary skill in
the art would not consider the description sufficient.” Alton 76 F.3d at 1175-76, 37 USPQ2d at
1583. A negative limitation which does not appear in the written description of the specification
as filed would cause the claim to violate the written description requirement of § 112, first
paragraph, if it introduces new concepts. See Ex parte Grasselli, 231 USPQ 393 (Bd. App.
1983), aff’d mem., 738 F.2d 453 (Fed. Cir 1984), citing In re Anderson, 471 F.2d 1237, 1
76 USPQ 331 (CCPA 1973).
The issue raised by the examiner involves the following italicized clause in the context of
illustrative claim 1 which is drawn to “[a] method for fabricating a portion of a semiconductor
device comprising” at least the steps wherein
the gate structure [is] formed by:
depositing the insulating oxide layer on the substrate;
depositing the polysilicon layer on the oxide layer;
implanting nitrogen ions only into the polysilicon layer; and
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