Appeal No. 2000-0038
Application 08/751,369
of unexpected results (reply brief, page 3). This argument is
not well taken because the appellants have not provided a side-
by-side comparison, commensurate in scope with the claims, of
their claimed invention with the closest prior art, and have not
explained why the results would have been unexpected by one of
ordinary skill in the art. See In re Baxter Travenol Labs., 952
F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991); De Blauwe,
736 F.2d at 705, 222 USPQ at 196; In re Grasselli, 713 F.2d 731,
743, 218 USPQ 769, 778 (Fed. Cir. 1983); In re Clemens, 622 F.2d
1029, 1035, 206 USPQ 289, 296 (CCPA 1980); In re Freeman, 474
F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA 1973); In re Klosak, 455
F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972).
The preponderance of the evidence, therefore, indicates that
the process recited in the appellants’ claim 10 would have been
obvious to one of ordinary skill in the art within the meaning of
35 U.S.C. § 103.
Claim 31
Heming discloses that the intermediate layer can be, and in
one embodiment preferably is, SiO2 (col. 8, lines 48-50 and 57-
58). Since the claim recites “at least one of SiO2 and a mixture
of SiO2 and TiO2 and of Si3N4", the appellants’ argument (brief,
8
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