Appeal No. 2004-0721
Application No. 09/401,409
The appellants seem to implicitly concede that the
definition of the word “on” in the here claimed depositing step
is broad enough to encompass Xu’s adhesive layer but argue that,
when interpreted in light of the subject specification, it is
clear that the appealed claims require the oxide to be in contact
with the low-k dielectric material thereby excluding patentee’s
intermediate adhesive layer. The appellants more fully describe
their position on page 7 of the brief in the following manner:
The specification of the Present Application clearly
states in describing the elements of FIG.3: “a thick
oxide layer of conventional dielectric material 18
(which in this embodiment is SiO2) is deposited on low-
k material 16. Oxide layer 18 deposits conformally and
roughly assumes the topography of the low-k material 16
beneath the oxide layer[18].” [Emphasis Added]
(Application Page 4, Lines 9-11). It is clear when
FIG. 3 and the associated text are taken together in
context, that the use of the word “on” is in the sense
of “in contact with an outer surface” as shown in FIG.
3.
2(...continued)
explained by the appellants in the reply brief, the Figure 1
disclosure concerns prior art and problems relating thereto
whereas the Figure 2 disclosure concerns Xu’s invention which
overcomes the problems of this prior art. Plainly, these
disclosures are not related to each other, and it is well settled
that a section 102 rejection must not involve combining various
disclosures not directly related to each other by the teachings
of the reference. See In re Arkley, 455 F.2d 586, 587, 172 USPQ
524, 526 (CCPA 1972). Nevertheless, in any further prosecution
that may occur, the examiner and the appellants should consider
whether these disclosures might be properly combinable in the
context of a rejection under 35 U.S.C. § 103(a).
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