Appeal 2007-2510
Application 10/389,456
1 with any analysis of the disclosure in the Economikos specification or the
2 skill and knowledge of the ordinary worker.
3 Wang responds to this aspect of the Examiner's argument by pointing
4 out that Economikos claim 1 recites that the bottom of the trench is "covered
5 by"—not "in contact with"—the semiconductor substrate. Moreover,
6 according to Wang, the silence of the broad claim as to silicon nitride "is not
7 the same as teaching or suggesting that the layer to be oxidized is in contact
8 with the substrate." (FF 16; Br. at 12.)
9 The Examiner does not respond with any substantive discussion of the
10 disclosure of Economikos or of the state and knowledge of the art that would
11 illuminate how one skilled in the art would have regarded the language of
12 Economikos claim 1. Accordingly, we are provided with no findings of fact
13 to assess and thus no basis to review the Examiner's conclusions. Support
14 for what Economikos would have conveyed to the ordinary worker must be
15 specified before conclusions drawn therefrom can be reviewed. That
16 process should be conducted, in the first instance, by those who are familiar
17 with the art as a whole.
18 The Examiner and Wang may wish to consider, in addition to claim 1,
19 claims 2 and 3, which depend from claim 1, and which recite the presence of
20 a silicon nitride layer. Figure 3 and associated specification text at 4:35-50,
21 which describe the results of a calculation of oxidation of α-silicon in a
22 trench without a lining of silicon nitride may also be informative. We
23 decline to make findings of fact as to what weight these factors ought to be
24 given based on the present undeveloped record.
12
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