Appeal No. 2006-3039
Application No. 10/751,141
the briefs along with the examiner’s rationale in support of the rejections and arguments
in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before us, that the disclosure of
Michejda does not fully meet invention as set forth in the claim 12. We also find that the
evidence relied upon and the level of skill in the particular art would not have suggested
to one of ordinary skill in the art the obviousness of the invention as set forth in the
claims 13-25. Accordingly, we reverse.
We first consider the examiner’s rejection of claim 12 under 35 U.S.C.
§ 102(e) as being anticipated by Michejda. Anticipation is established only when a
single prior art reference discloses, expressly or under the principles of inherency, each
and every element of a claimed invention as well as disclosing structure which is
capable of performing the recited functional limitations. RCA Corp. v. Applied Digital
Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984); W.L.
Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313
(Fed. Cir. 1983). Only those arguments actually made by appellants have been
considered in this decision. Arguments which appellants could have made but chose
not to make in the briefs have not been considered and are deemed to be waived [see
37 CFR § 41.37(c)(1)(vii)(2004)].
The examiner has indicated how the claimed invention is deemed to be fully met
by the disclosure of Michejda [answer, pages 3 and 4]. Appellants argue that Michejda
does not disclose shallow cavities formed in an isolation oxide region as claimed.
Rather, Michejda forms isolation structures 150 inside trenches formed in the
semiconductor substrate. Doped material is then deposited on top of the isolation
structures [brief, page 6; reply brief, pages 2-4]. In short, appellant argues that no
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