Appeal No. 2003-2130
Application 08/159,461
and annealing step can therefore result in two silicon nitride layers as disclosed in Haddad,
appellant was not in possession of the method claimed using said clause in appealed claim 1 and
the other claims here rejected, at the time the application was filed (answer, pages 7-8).
Appellant contends that the passage of the specification we refer to above “only describes
implantation into the polysilicon layer without any teaching or suggestion of implantation [in]
other layers,” and submits that “[a]bsent some evidence that nitrogen implantation into the
polysilicon must inherently and necessarily result in implantation into other layers underlying the
polysilicon, the claim limitation is adequately described in the specification” (brief, pages 7-9;
see also reply brief, pages 2-5).
We agree with appellant. The limitation of the here rejected appealed claims to a method
wherein nitrogen ion implantation and annealing involves only the polysilicon layer is subject
matter specifically described in the written description of the specification and thus, simply does
not involve a negative limitation with respect to the remainder of the method as the examiner
contends. Indeed, as a matter of fact, the passage of the specification we refer to above makes
clear, as appellant argues, that the concept of implantation of nitrogen ions and subsequent
annealing involving only the polysilicon layer in the context of the disclosed method was within
his possession at the time the application was filed, which is all that is required by § 112, first
paragraph, written description requirement. To the extent that the examiner’s position can be
considered as under § 112, first paragraph, enablement requirement, the examiner has not
supplied the record with evidence that, prima facie, one of ordinary skill in this art would have
been unable to practice the method as claimed based on the information supplied in the written
description in the present specification.2 Indeed, the passage from Haddad we refer to above
2 It is well settled that under this statutory provision, the examiner has the burden of providing a
reasonable explanation, supported by the record as a whole, why the assertions as to the scope of
objective enablement set forth in the specification are in doubt, including reasons why the
description of the invention in the specification would not have enabled one of ordinary skill in
this art to practice the claimed invention without undue experimentation, in order to establish a
prima facie case under the enablement requirement of the first paragraph of § 112. See In re
Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993); In re Wands, 858 F.2d
731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988); In re Strahilevitz, 668 F.2d 1229, 1232,
212 USPQ 561, 563 (CCPA 1982); In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367,
369-70 (CCPA 1971). It is further well settled that “[a]n inventor need not . . . explain every
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