Appeal No. 1998-1728
Application 08/397,243
mixed structures disclosed in the present application is different from that taught by Satou.3
Accordingly, the burden falls upon appellants to establish by effective argument or objective evidence
that the claimed invention patentably distinguishes over the disclosure of Satou even though the rejection
is based on § 103. In re Spada, 911 F.2d 705, 708-09, 15 USPQ2d 1655, 1657-58 (Fed. Cir.
1990); In re Best, 562 F.2d 1252, 1254-56, 195 USPQ 430, 432-34 (CCPA 1977); Wertheim,
supra; In re Skoner, 517 F.2d 947, 950-51, 186 USPQ 80, 82-83 (CCPA 1975). Furthermore,
while the issue here has been framed by the examiner as one of obviousness under § 103, it reasonably
appears to us that the target of Satou Example 1 falls within appealed claims 1 and 2, which is indeed
evidence of a lack of novelty of the claimed invention as encompassed by the appealed claims that is, of
course, “the ultimate of obviousness.” In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571
(CCPA 1982); Wertheim, supra; Skoner, supra. Thus, to the extent that the target of Satou Example
1 anticipates the claimed target encompassed by appealed claims 1 and 2, the case of obviousness is
irrebuttable. Fracalossi, supra.
Accordingly, since a prima facie case of obviousness has been established over the applied
prior art, we have again evaluated all of the evidence of obviousness and nonobviousness based on the
record as a whole, giving due consideration to the weight of appellants’ arguments and the evidence in
the specification. See generally, Spada, 911 F.2d at 707 n.3, 15 USPQ2d at 1657 n.3; In re
Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
We have carefully considered all of appellants’ arguments and the evidence presented in the
specification. Appellants essentially present two arguments. First, appellants allege that the claimed
target encompassed by appealed claims 1 and 2 is distinguished from that of Satou by the number of
independently existing metal silicide grains in the fine mixed structure as specified in the appealed claims
3 We recognize that the examiner has allowed the claimed process encompassed by pending claims 6
through 10 after consideration of Satou. However, we are concerned here with the patentability of the
claimed product encompassed by the appealed claims. Cf. In re Wertheim, 541 F.2d 257, 271, 191
USPQ 90, 103-04 (CCPA 1976).
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