Appeal 2007-0665
Application 09/772,986
lower limit range value of “about 100 nm” allows for values slightly below
100 nm. Hisao also discloses that the gate insulating film 4 has a thickness
in the range of 100-200 nm which overlaps the claimed range of “greater
than 100 nm.” In situations where claimed ranges overlap the ranges
disclosed in the prior art, a prima facie case of obviousness is established.
See Woodruff, 919 F.2d at 1577, 16 USPQ2d at 1936, and In re Wertheim,
541 F.2d 257, 271, 191 USPQ 90, 103-04 (CCPA 1976).
CONCLUSION
In view of the foregoing, we reverse the Examiner’s 35 U.S.C.
§ 102(b) rejection of claims 1-8, 13, and 15, but we sustain the 35 U.S.C.
§ 103(a) rejection of claims 14 and 16. A new rejection of claims 1-8, 13,
and 15 under 35 U.S.C. § 103(a) is entered pursuant to 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides [a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner....
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record....
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