Appeal No. 2000-1004
Application 08/743,628
which it would have been apparent to one of ordinary skill in this art that the capping layer
comprised of either material would not contain nitrogen. The examiner submits that the barrier
or capping layer of silicon or silicon dioxide would not interfere with the reflectivity of the
titanium nitride antireflective layer, pointing to the teachings of the deposition of “approximately
250 A [sic, Å] of Si” as the capping layer in an embodiment of the reference (col. 3, lines 48-54).
Indeed, we observe that one of ordinary skill in this art would have reasonably inferred that the
barrier or capping layer would not so interfere from the objective of Abernathey “to provide a
satisfactory barrier that avoids undesirable interactions while at the same time providing a
technique that achieves photolithographic low reflectivity” (col. 2, lines 41-44; emphasis
supplied).1
Accordingly, on this record, we find that the examiner has established that it reasonably
appears that the claimed process is identical or substantially identical to the process of
Abernathey, and thus the burden falls upon appellants to establish by effective argument or
objective evidence that the claimed process patentably distinguishes over Abernathey, even
though the rejection is based on § 103(a). See, e.g., In re King, 801 F.2d 1324, 1326-28, 231
USPQ 136, 138-39 (Fed. Cir. 1986) (“Here, appellants’ burden before the board was to prove
that Donley’s structure does not perform the so-called method defined in the claims when placed
in ambient light. . . . It did not suffice merely to assert that Donley does not inherently achieve
enhanced color through interference effects, challenging the PTO to prove to the contrary by
experiment or otherwise. The PTO is not equipped to perform such tasks.”); In re Best, 562 F.2d
1252, 1255-56, 195 USPQ 430, 433-34 (CCPA 1977)( “Where, as here, the claimed and prior art
products are identical or substantially identical, or are produced by identical or substantially
identical processes, the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product. See In re Ludtke,
[441 F.2d 660, 169 USPQ 563 (CCPA 1971)]. Whether the rejection is based on ‘inherency’
under 35 USC 102, on ‘prima facie obviousness’ under 35 USC 103, jointly or alternatively, the
1 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir.
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
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