Appeal No. 1996-2086
Application 08/255,588
limitation to be inherent in the prior art, and thus anticipated by it, the examiner must
establish that there is a necessary relationship between the claim limitation and the prior
art method.
Here, we do not find that the Fuller patent discloses, either explicitly or inherently,
the claim limitations of heating the substrate and gettering material to a temperature
greater than, or within 150EC, of the melting point of the gettering material as required by
claims 1 and 8, respectively. While we acknowledge the examiner’s point that tin and zinc
are molten at the lowest temperature of 450EC taught by Fuller (col. 3, lines 1-2), and that
the temperature range may be between 450E-900EC which includes temperatures within
150EC of the melting point of antimony and silver, we note that the patent does not
disclose that this is a necessary relationship between the gettering material and the
temperature. Thus, while it cannot be gainsaid that the patent would have suggested using
those materials at temperatures within the scope of the claims, one skilled in the art can,
nevertheless, use Fuller’s method of impurity gettering without necessarily selecting tin,
zinc, antimony and silver and without employing the claimed temperatures. That is, as
pointed out by the appellant, one skilled in the art could perform the method described by
Fuller using gold which has a melting point of 1064EC. The possibility that one skilled in
the art might employ (i) tin or zinc in Fuller’s method, or (ii) antimony or silver at the upper
limit of Fuller’s temperature range, does not show anticipation. In re Arkley, 455 F.3d
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007