Appeal No. 1996-0200
Application 08/119,444
of Chen cannot serve as a platform and an electrode for the generation of plasma in a
vacuum chamber in the formation . And the examiner has not established under the
principles of inherency that Chen’s process of anodizing a capacitor foil inherently
produces a high temperature-resistant anodized aluminum “susceptor” useful as a platform
and an electrode in plasma-assisted chemical vapor deposition processes.
An additional comment is necessary. Appellants have argued that the Chen
reference is non-analogous art with respect to the 35 U.S.C. § 102 rejection. We point out
that this argument is not germane to a § 102 rejection. In re Self, 671 F.2d 1344, 1351,
213 USPQ 1, 7 (CCPA 1982).
The PTO also has the burden, via the examiner, to establish a prima facie case of
obviousness. In re Lowry, 32 F.3d 1579, 1584, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994);
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
A proper analysis under §103 requires, inter alia, consideration of two factors:
(1) whether the prior art would have suggested to those of ordinary skill in the art that they
should make the claimed composition or device, or carry out the claimed process; and
whether the prior art would also have revealed that in so making or carrying out, those of
ordinary skill would have a reasonable expectation of success. In re Vaeck, 947 F.2d 488,
493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
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