Appeal No. 1997-4194
Application No. 08/357,435
The Rejections under 35 U.S.C. 102(b) and 103
In order for a claimed invention to be anticipated under 35 U.S.C. § 102(b), all
of the elements of the claim must be found in one reference. Scripps Clinic &
Research Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001,
1010 (Fed. Cir. 1991).
The examiner relies on the Dubois reference as anticipating the claimed subject
matter. However, the examiner states that, “[t]he reference does not explicitly
disclose the instantly claimed alloy film thickness.” See Answer, page 5. Both
independent claims 1 and 11 and dependent claims 2 through 10 and 12 through 19
dependent thereon require the presence of a metal alloy film less than about 3,000
D thick. That omission from the teachings of Dubois, in and of itself is sufficient to
constitute grounds for reversal of the rejection on the grounds of anticipation.
As for the rejection under section 103, we find that Dubois discloses an
AlCuFe alloy having ratios within the scope of the claimed subject matter. See
Abstract. However, as stated at column 3, lines 15-17, column 13, lines 38-41,
column 14, lines 53-54 and claim 1, the mean grain size of the crystallites in the
crystalline phase is greater than 1000 nm, corresponding to 10,000D. Stated
otherwise, 3,000D units, of the claimed subject matter, converts to 300 nm.
Accordingly, we find no suggestion or motivation for preparing a composition of the
thickness of the claimed subject matter. Moreover, Dubois expressly teaches that
the undesirability of microcrystalline material having a grain size below 100 nm or
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