Ex Parte Kumar et al - Page 6

                Appeal 2006-2499                                                                                   
                Application 10/268,735                                                                             

                case of prima facie obviousness.  See In re Peterson, 315 F.3d 1325, 1329-                         
                30, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003).                                                         
                       Applying the preceding legal principles to the factual findings from                        
                the record in this appeal, we determine that the Examiner has established a                        
                prima facie case of obviousness in view of the reference evidence, which                           
                prima facie case has not been adequately rebutted by Appellants’ arguments.                        
                Further, we note that Appellants have not presented arguments to any                               
                comparative evidence that would rebut the prima facie case of obviousness                          
                (see the Brief in its entirety).  We determine that the claims on appeal are                       
                drafted in product-by-process format, and, therefore, we must make factual                         
                inquiry into the differences between the prior art and claimed product, and                        
                not the process for making it.  See In re Wertheim, 541 F.2d 257, 271,                             
                191 USPQ 90, 103 (CCPA 1976).  We determine that the Examiner bears a                              
                lesser burden of proof to establish a prima facie case of obviousness with                         
                product-by-process claims, due to the inability of the Patent Office to make                       
                and compare the prior art and claimed products.  See In re Fessman,                                
                489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974); In re Fitzgerald,                                
                619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980).  As shown by factual                               
                finding (1) listed above, we determine that Lin discloses every limitation of                      
                the claims on appeal with the exception of the barrier layer thickness and                         
                conduction layer reflectance (Answer 3-4; Br. 4-5).  As shown by factual                           
                finding (2) listed above, Lin exemplifies a thickness for the barrier layer of                     
                between 230 and 285 Angstroms.  The mere difference in thickness of the                            
                barrier layer of Lin and the barrier layer as claimed has not been shown to be                     
                critical.  See In re Woodruff, supra.  Furthermore, as shown by factual                            


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