Appeal No. 1998-1728
Application 08/397,243
µm or less” to form “a minute structure,” and cautions that “[a]n uneven mixture is undesirable because
the composition and structure of the resultant target become uneven” (col. 13, lines 51-68; see also,
e.g., col. 11, line 41, to col. 12, line 2). We find that appellants disclose in their specification that the
metal and silicon having the same grain sizes are uniformly mixed with a silicon/metal atomic ratio of 2.0
to 4.0 (e.g., page 16, first full paragraph; page 18, full paragraph, and paragraph bridging pages 19-20)
and require in claim 2 that the silicon/metal atomic ratio across the target can vary from the average
value of this ratio by ± 0.02. Thus, even though Satou does not disclose the extent of the uniformity of
the silicon/metal atomic ratio distribution across the target, we must agree with the examiner (answer,
page 4) that it reasonably appears that the said ratio would vary across the targets of Satou, such as that
of Satou Example 1, within the limitation specified in claim 2.
We find that the process of preparing the fine mixed structure of the target disclosed by Satou
differs from that disclosed and claimed by appellants. However, as noted above, the targets disclosed
by Satou reasonably appear to have the same characteristics as recited in the appealed claims and
otherwise disclosed by appellants, and thus, on this record, we must agree with the examiner (answer,
pages 5-6) that, prima facie, there is no discernable difference between the claimed and prior art
targets that would appear to be the result of the process by which the fine mixed structure is prepared.
Indeed, this would be so even if the appealed claims included limitations that characterize the
encompassed claimed target at least in part by the process by which it is made. See, e.g., In re
Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985).
Thus, based on this evidence, we must agree with the examiner’s position that the claimed
invention encompassed by claim 1, as we have interpreted it above, would have been prima facie
obvious over Satou because, on this record, it reasonably appears to us that one of ordinary skill in this
art in following the teachings of the reference would have arrived at a refractory metal silicide target
comprising at least a fine mixed structure composed of metal silicide grains and silicon grains that is
identical or substantially identical to the claimed refractory metal silicide target even though the number
of independently existing metal silicide grains is not taught by Satou and the process of making fine
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