Appeal 2007-0127
Application 09/749,916
1 temperature gradient; (b) increased lifetime; (c) reduced byproduct
2 deposition behind the electrode; (d) reduced electrical resistance; and (e)
3 increased plasma confinement. (Br., p. 12, ll. 8-11).
4 The Examiner disagrees with the Appellants’ characterization of the
5 evidence as “unexpected” and cites Uwai as rebuttal evidence that the results
6 of thicker electrodes are expected. (Answer, p. 21, ll.13-17).
7 Whether evidence shows unexpected results is a question of fact and
8 the party asserting unexpected results has the burden of proving that the
9 results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70, 43 USPQ2d
10 1362, 1364-5 (Fed. Cir. 1997). The evidence must be (1) commensurate in
11 scope with the claimed subject matter, In re Clemens, 622 F.2d 1019, 1035,
12 206 USPQ 289, 296 (CCPA 1980), (2) show what was expected, to
13 “properly evaluate whether a … property was unexpected”, and (3) compare
14 to the closest prior art. Pfizer v. Apotex, 480 F.3d 1348, 1370-71, 82
15 USPQ2d 1321, 1338 (Fed. Cir. 2007).
16 First, we observe that the evidence is not commensurate in scope with
17 the claimed subject matter. For example, the electrodes which were tested
18 by Mr. Hubacek are said to have had electrical resistivities of “from about
19 0.005 - 0.02 ohm-cm.” (Hubacek Declaration, p. 3, l. 12 - page 2, line 1.)
20 Claim 1 recites a resistivity of from about 0.005 to 0.1 ohm-cm. All of the
21 tests appear therefore to be clustered at the lowest edge of the claimed range.
22 As to the thickness of the electrode, only two thicknesses, 0.25 inch and 0.35
23 inches were tested, less than half of the claimed range for thickness. The
24 vast majority of the two claimed ranges is largely untested.
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