Appeal No. 1998-1728
Application 08/397,243
in appellants’ application and the process disclosed by Satou. Indeed, while the process of
Comparative Examples 1-6 may represent “prior art targets,” as appellants allege, the same are not
those of Satou because they are not “made according to a process similar to Satou,” as appellants
further alleged, and appellants admit as much by pointing to the differences in the heating and pressure
schedules in the sintering and densifying steps (brief, pages 7-8 and 9-10) and to the absence of a step
of “crushing or pulverizing the refractory metal silicide semi-sintered body” in the process of Satou (id.,
page 9, first full paragraph). With respect to the latter, appellants’ conclusion that, in the absence of
“crushing or pulverizing,” “a powder lump . . . is likely to remain in the target structure” with the stated
consequences (id.; emphasis added) is clearly not supported by any evidence in the record based on
the process disclosed in Satou per se (see supra notes 7 and 10) or on the processes for preparing
either the specification Examples or Comparative Examples, and thus is entitled to little, if any, weight.
See In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972) (“This court has said . . .
that mere lawyers’ arguments unsupported by factual evidence are insufficient to establish unexpected
results. [Citations omitted.] Likewise, mere conclusory statements in the specification and affidavits are
entitled to little weight when the Patent Office questions the efficacy of those statements. [Citations
omitted]”). Indeed, the processes for preparing the Examples and Comparative Examples in the
specification both involve a step of crushing the semi-sintered silicide material, as we pointed out above.
We further point to another of the numerous differences, which is the difference in the maximize
size of the metal and silicon grains used in preparing the initial powder mixture between the specification
Example and Comparative Examples, neither of which conforms to the maximum grain sizes considered
by Satou to be necessary to necessary to obtain “a minute structure” (see supra pp. 7-8). In addition,
it is not apparent whether the maximum size of silicon grains used in the specification Comparative
Examples would provide a silicon/metal atomic ratio in the range of 2-4 (see supra p. 8).
Thus, in the absence of an explanation, the presence of these and other differences between the
processes of the specification Examples 1-10, the specification Comparative Examples 1-6 and as
disclosed in Satou constitute such a “welter of unfixed variables” that any actual difference between the
claimed target encompassed by appealed claims 1 and 2 and the target taught by Satou which may even
be indirectly shown in the results described in appellants’ specification and shown in the Figures
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