Appeal No. 1998-1728
Application 08/397,243
there is no direct or indirect evidence reflecting the closest prior art which is Satou, and indeed, there is
no explanation or evidence in the record which establishes that the evidence of record can be
extrapolated to a reliable comparison of the claimed target and the target of Satou in a manner which
addresses the thrust of the rejection under § 103. See generally, In re Burckel, 592 F.2d 1175, 1179,
201 USPQ 67, 71 (CCPA 1979); In re Merchant, 575 F.2d 865, 868, 197 USPQ 785, 787 (CCPA
1978); In re Blondel, 499 F.2d 1311, 1317, 182 USPQ 294, 298 (CCPA 1974).
With respect to the comparison provided in specification Tables 1 and 2,4 we find from a
comparison of the processes for preparing the specification Examples 1-10 (pages 36-37), the
Comparative Examples 1-6 (page 38) and the process taught by Satou (col. 13, line 51, to col. 15, line
68, col. 16, lines 6-26, and Table 1) that there are a considerable number of differences between these
three processes, which differences we separate into those involved with preparing the powder mixture
and those involved with silicide synthesis, sintering and densification. The differences with respect to
preparing the powder mixture include: (1) the maximum size of the silicon grains used in the
Comparative Examples is 50 µm, while the maximum size used in the specification Examples is 30 µm,
which latter grain size is specified in Satou to obtain “a minute structure” and used in Satou Example 1
(col. 13, lines 58-61, and col. 16, lines 6-10); (2) the maximum size of the metal grains used in at least
the specification Examples, if not also the Comparative Examples,5 is 15 µm while the maximum size
specified in Satou in order to obtain “a minute structure” and used in Satou Example 1 is 10 µm (id.);
(3) while it would appear that the silicon/metal atomic ratio for the specification Examples falls within the
range of 2-4 (specification, page 18), the same presumption cannot be made with respect to the
specification Comparative Examples in view of the silicon grain size, and a value within this atomic ratio
4 We limit our discussion to the data respecting specification Examples 1-10 and Comparative
Examples 1-6 reported in Tables 1 and 2 and to FIGS. 1A, 2A, 3A and 4A, which appellants
extensively discuss in the brief. While appellants also mention specification Table 7 (brief, page 8), they
have not discussed in connection therewith either the preparation of specification Examples 24-34 and
Comparative Examples 16-26 or the reported density measurements for these targets vis-à-vis the
teachings of Satou. We will not examine the evidence in Table 7 in greater detail than argued by
appellants.
5 The “M powder” in the Comparative Examples is disclosed to be “equal to that used in Examples 1 –
10” (specification, page 38, lines 2-3; emphasis supplied).
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