Appeal No. 2003-2124
Application No. 09/769,162
appellants, "[i]t's legal error to characterize applicants'
teachings and discoveries as either part of the prior art or as
an admission of facts" (page 2 of Request, first paragraph).
As stated in our decision, "Nakajima does not expressly
teach that the presence of the phosphorous doped oxide modifies
the re-oxidation oxide profile such that its thickness is reduced
compared to a method wherein a layer of phosphorous doped oxide
is not used."1 However, we remain of the opinion that the
examiner properly concluded that the process of Nakajima is
sufficiently similar to the claimed method that it is reasonable
to conclude that the reference process necessarily, or
inherently, achieves the claimed effect of reducing the modified
re-oxidation oxide profile compared to such profile produced in
the absence of a layer of phosphorous doped oxide. The
examiner's rationale, which has not been substantively rebutted
by appellants, states that much, not all, of the technical
reasoning is provided by appellants' specification. Furthermore,
appellants' explanation in the specification is tantamount to an
admission that the process of Nakajima necessarily produces the
claimed reduction in width of the re-oxidation oxide profile.
When, as here, the dispositive issue is whether it is reasonable
1 Page 4 of decision, second paragraph.
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