Ex Parte SANDHU - Page 32




                energy ions does not show any significant affect on resistivity.  These plasma-treatment-only examples                      
                were said to have resistivities of 13,500 and 15,500 :ohms-cm compared to the reported resistivities                        
                of 11,360 and 16,000 for control samples which were not post-treated. Application 09/128,143,                               
                Specification, p. 9, ll. 5-20 and p. 10, l. 12 - p. 11, l. 20.  The 143 Specification itself characterizes                  
                these plasma only treatments as not having much effect.  Application 09/128,143, Specification, p. 11,                      
                ll. 19-20.  The 143 Specification does not say or convey that the plasma-only treatments are merely                         
                an embodiment of the invention.  Rather, they are presented to demonstrate that it was “highly                              
                unexpected that when a bias voltage was applied to the substrate in a plasma, the sheet resistivity                         
                markedly decreased, and, more importantly, remained stable over time.” Application 09/128,143,                              
                Specification, p. 11, ll. 21-24.  Consistent with the written description, the original claims of the 143                   
                Specification similarly required either bombardment with high energy ions or the use of a biased                            
                plasma to improve or change CVD film properties.   Thus,  the entirety of the original 143                                  
                Specification conveys that the use of high energy ions or a biased plasma is the inventive contribution.                    
                The 143 Specification does not demonstrate possession of a process for improving film resistivity and                       
                lowering carbon content which does not include bombardment with high energy ions or treatment in                            
                a biased plasma.                                                                                                            
                        Claims 17, 19, 20 and 26 specifically added to provoke this interference do not require either                      
                treatment with high energy ions or with a biased plasma.  These claims broadened the scope of the                           
                invention beyond the scope clearly and unequivocally described in the original 143 Specification.  The                      
                original 143 Specification did not convey to a person having ordinary skill in the art that Leung had                       
                possession of a process for reducing resistivity and the carbon content of CVD films that did not                           
                include post-treatment with high energy ions or a biased plasma.  The permissible scope of the claims                       
                may be limited by a narrow disclosure.  Gentry, 134 F.3d at 1479, 45 USPQ2d  at 1503.                                       
                        In our view, the facts here are comparable to those in Curtis, supra.  In that case, Curtis was                     
                denied the benefit of the filing date of a parent application with respect to generic claims directed to                    
                dental flosses having a “friction enhancing coating.”  The written description of the parent application                    
                was found not to generically describe friction enhancing coatings.   The parent application conveyed                        
                only that a particular material “MCW” could be used as a friction enhancing coating.  Curtis’ earlier                       
                application did not convey that any other material could be used as a friction enhancing coating                            
                generically claimed in the later application.   In other words, Curtis’ parent specification did not tell                   
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