Appeal No. 1997-3691 Page 9
Application No. 08/298,018
been within the purview of one skilled in the art to select and optimize the appropriate parameters and
dimensions including the thickness of the conductive region to obtain the desired conductivity.”
The examiner’s unsupported statement is insufficient to meet the examiner’s burden of
producing a factual basis for the rejection. Nor do we find, from our review, any teaching in the prior
art references to Feist, Osinski, Rodder or Sitaram that would have suggested a conductive region
formed on said silicide region which is formed on said gate structure located in substantially the same
location as the disposable structure with substantially the same thickness as the disposable structure.
We are not inclined to dispense with proof by evidence when the proposition at issue is not supported
by a teaching in a prior art reference or shown to be common knowledge of unquestionable
demonstration. Our reviewing court requires this evidence in order to establish a prima facie case. In
re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984); In re
Knapp-Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d
664, 668, 148 USPQ 268, 271-72 (CCPA 1966). Our reviewing court states in In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) the following:
The Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15
L.Ed.2d 545, 148 USPQ 459 (1966), focused on the procedural and evidentiary
processes in reaching a conclusion under Section 103. As adapted to ex parte
procedure, Graham is interpreted as continuing to place the "burden of proof on the
Patent Office which requires it to produce the factual basis for its rejection of an
application under sections 102 and 103." In re Warner, 379 F.2d 1011, 1020, 154
USPQ 173, 177 (CCPA 1967).
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