Appeal No. 2006-1361
Application No. 09/997,019
F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984);
W.L. Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). The examiner has indicated how the
invention of these claims is deemed to be fully met by the disclosure of Wang [answer, pages
3-7].
With respect to independent claim 1, appellants argue that Wang lacks any express or
inherent description of spreading a second material layer over a first material layer so as to
form a second material layer having a planar surface as claimed. Appellants argue that the
drawings of Wang cannot be relied on as disclosing that the upper surface 62 in Figure 4d is
substantially planar, and that although Wang specifically discloses that the surface is “largely
planar,” Wang discloses that the term “largely planar” is a relative term and that there may
be slight depressions in the surface. Appellants assert that Wang’s description acknowledges
the fact that conventional spin-on processes are incapable of forming material layers with
planar surfaces [brief, pages 9-10].
The examiner responds that appellants’ own specification describes the surface resulting
from use of the claimed invention as “substantially planar.” Thus, the examiner argues that
appellants’ own disclosure does not eliminate the possibility of the existence of slight
depressions as taught by Wang, and that the teaching of “largely planar” in Wang means
“substantially planar” within the meaning of appellants’ own disclosure. [answer, pages 8-
14].
Appellants respond that the term “substantially planar” does not include surfaces with
depressions, but only surfaces with minor deviations from planar that the artisan would
consider to be planar. Appellants also respond that the layer of spin-on glass, as taught by
Wang, has a high viscosity that is unlikely to result in a planar surface as recited in claim 1
[reply brief, pages 2-4].
We will sustain the examiner’s rejection of claim 1 as being anticipated by Wang. The
key section of Wang reads as follows:
Importantly, smoothening layer 60 has an upper surface 62
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