Appeal No. 2004-0660
Application No. 10/120,116
have interpreted the specification and claims. With respect to
this fundamental consideration, the § 1.132 declaration of record
by one skilled in this art constitutes probative evidence that
the artisan would interpret the “non-biased” feature under
consideration in the manner urged by the Appellants. Such an
interpretation would render the “non-biased” recitation of the
specification and claims meaningful as well as enabled and
operative. On the other hand, to regard “non-biased” as referring
to a complete absence of bias, as the Examiner seems to urge, would
be contradictory to what is known in the prior art (e.g., the
Vossen reference) and thus nonsensical to the artisan.
Viewed from this perspective, the record before us supports a
determination that the artisan would not interpret the Appellants’
claimed and disclosed invention in a manner which would render
it nonsensical, not enabled and inoperative but instead would
interpret the “non-biased” feature in question as referring to “not
applying an external RF bias to the wafer” (id.) in accordance with
the Appellants’ argument. As so interpreted, claims 4 and 10 would
not be subject to the Examiner’s enablement-based § 112, first
paragraph, rejection since, as indicated above, “[t]he examiner is
not rejecting the claims because it is not known to deposit without
an external bias” (answer, page 9). As for the Examiner’s above
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