Appeal No. 2005-2100
Application No. 09/826,038
Originally presented claim 6 did not include the process steps set forth in claim
6 now before us on appeal. During prosecution the examiner rejected the originally
presented claim under 35 U.S.C. §§ 102(b), and 102(e). See Office Action, mailed
February 20, 2003. In response, Appellant amended claim 6 to add specific process
steps including the requirement that the wet etching step is performed after the dry
etching step. See page 4, Paper received May 13, 2003. In addition, Appellant argued
that the prior art did not teach the order of the process limitations as set forth in the
amended claim. Id., pages 9 and 10. The examiner responded by withdrawing the
rejections of record and issuing the rejection over Funk that is now before us on
appeal. See Office Action, mailed July 15, 2003, pages 2 and 3.
In all, it would appear that not only the plain meaning of the claim language, but
the specification and the prosecution history support the construction of Appellant’s
claim 6 as drawn to a process that comprises steps which are performed in the order set
forth in the claim, including the requirement that the wet etching step is performed
after the dry etching step. Loral Fairchild Corp. v. Sony Corp., 181 F.3d 1313, 1322,
50 USPQ2d 1865, 1870 (Fed. Cir. 1999) (“Although not every process claim is limited
to the performance of its steps in the order written, the language of the claim, the
specification and the prosecution history support a limiting construction in this case.”).
As the majority recognizes (supra page 3), Appellant focuses on this particular
ordering of the process steps to distinguish claim 6 from the Funk reference asserting,
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