Appeal No. 2005-2695
Application No. 10/280,926
§ 8.03 at 8-14 (2001) (noting the difference between the requirements of “definiteness,
which claims must meet, from the requirements of enablement, which the disclosures of
the specification must meet”).
From our study of the instant specification, we find that the written description is
overly concise wherein we agree with the examiner that the written description of the
invention does not evidence that appellants were in possession of the claimed invention
at the time of the invention. We find no discussion of the use of the electrodes as a
mask or that the process employed is a self aligned process. We find no citation of a
teaching in the NINE lines of argument in the brief with respect to dependent claim 17
and TWO lines of argument in the brief with respect to independent claim 19.
Appellants cite to lines 3-10 on page 6 of the specification. We find no express or clear
implied teaching of the use of an electrode as a mask at the indicated locations.
We find that the examiner essentially repeats the statement of the rejection in the
Answer made previously in the Final Rejection and then appellants further argue the
merits of the rejections in the Reply Brief. We find appellants’ arguments to be untimely
since the examiner has not changed the rejection or the arguments, but for
completeness we will address the merits of appellants’ arguments in the reply brief.
Appellants argue that the same words need not used in the claims as in the
specification. (Reply Brief at page 2.) While we agree with appellants, appellants must
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