Appeal No. 1998-2969
Application No. 08/317,818
breakage preventing layer. (See Fuji Electronic at col. 7.) This slurry forms only one
layer and not two layers as the examiner maintains. Appellants argue the native
oxides are not formed as the examiner alleges in the answer. (See reply brief at pages
1-3.) The examiner has not responded to appellants’ arguments, and the examiner has
provided no support for the position advanced in the answer. Therefore, we accept
appellants’ rebuttal to these unsupported statements by the examiner. Therefore, we
cannot sustain the rejection of claims 1, 3, 5, and 7 under 35 U.S.C. §§ 102 and 103.
Similarly, we cannot sustain the rejection of claim 4 under 35 U.S.C. § 103 based upon
Fuji Electronic or Amano alone.
OBVIOUSNESS-TYPE DOUBLE PATENTING
Here, the examiner has not set forth an element by element comparison of the
claims of the patent to those of the application. Therefore, the examiner has not set
forth a prima facie case, and we will not sustain the rejection. Furthermore, as
discussed above, with respect to the rejection under 35 U.S.C. § 102/103, the
disclosure of Amano does not teach or suggest the claimed invention, therefore it
should follow that Amano does not claim the same invention as recited in claims 1 and
3, and we cannot sustain the rejection under obviousness-type double patenting.
CONCLUSION
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