Appeal No. 2000-1004
Application 08/743,628
burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture
products or to obtain and compare prior art products. [Footnote and citation omitted.]”); In re
Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82 (CCPA 1975) (“Appellants have chosen to
describe their invention in terms of certain physical characteristics . . . . Merely choosing to
describe their invention in this manner does not render patentable their method which is clearly
obvious in view of [the reference]. [Citation omitted.]”).
Accordingly, since a prima facie case of obviousness has been established over
Abernathey by the examiner, we have again evaluated all of the evidence of obviousness and
nonobviousness based on the record as a whole, giving due consideration to the weight of
appellants’ arguments in the brief and reply brief. See generally, In re Johnson, 747 F.2d 1456,
1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 788 (Fed. Cir. 1984).
We have carefully considered all of appellants’ arguments and authority submitted in the
brief (pages 8-9 and 10) and reply brief (pages 2 and 3). The controlling authority with respect
to the issue of whether the process disclosed by Abernathey which includes the formation of the
approximately 250 Å barrier or capping layer of Si fall within the appealed claims is the line of
decisions by our reviewing Court and one of its predecessor courts beginning with Ludtke, supra.
It is clear from these decisions that more is required to patentably distinguish the claimed
process from that taught by Abernathey than the argument that the burden is on the examiner to
establish that the inherent properties of the barrier or capping layer prepared in Abernathey
where the examiner establishes that it reasonably appears from the references that this layer
would satisfy the requirements of appealed claim 9. King, supra; Best, supra; Skoner, supra.
We find no effective argument or objective evidence in the record which carries
appellants’ burden.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in Abernathey with appellants’ countervailing
evidence of and argument for nonobviousness and conclude that the claimed invention
encompassed by appealed claims 9 through 11 would have been obvious as a matter of law
under 35 U.S.C. § 103(a).
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