Appeal No. 1999-0801
Application 08/552,245
We have carefully considered the disclosure of Hanak as applied by the examiner. It is well
settled that a reference stands for all of the specific teachings thereof as well as the inferences one of
ordinary skill in this art would have reasonably been expected to draw therefrom, see In re Fritch, 972
F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir. 1992); In re Preda, 401 F.2d 825,
826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on the part of this person. In re Sovish, 769
F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985). We find ourselves in agreement with appellants
(brief, pages 4-6) that the construction of Hanak’s counter electrode 106 as shown in Hanak Fig. 1, is
not apparent from either the figure or the disclosure of the reference. Indeed, we find it readily apparent
from Hanak Fig. 1 that the line in the drawing that the examiner interprets to be a structural “wire
supporting the counter electrode” (answer, page 6), is instead conductor 110 which is described in Fig.
1 and disclosed in the reference merely as a common ground for said electrode and metal bottom plate
8 (col. 3, lines 19-22), and no teaching of a support function for said conductor is expressed in or could
be inferred from such a written description.4 In the absence of evidence or scientific reason advanced in
this record with respect to the construction of such a counter electrode, the examiner has not supported
the position that “the counter electrode is unbroken” and corresponds to the “gas baffle” specified in the
appealed claims as we have interpreted them above (answer, pages 4 and 6-7).
Even assuming that the record establishes that one of ordinary skill in this art would have
considered that Hanak’s “counter electrode is unbroken,” the examiner has not explained why this
person would have found in the combination of Hanak and the admitted prior art embodied in
specification Figures 1 and 2 any objective teaching, suggestion or motivation to modify the apparatus of
Hanak by providing the same with a sputter shield and to centrally locate the inert gas supply inlet above
the counter electrode 106 as required by claims 6 and 7. Indeed, bar jar 104 would have been
considered by one of ordinary skill in this art to act as a sputter shield and the examiner has not
addressed the matter of relocating the inert gas supply inlet. Thus, the fact that the apparatus of Hanak
can be modified by adding thereto the shield shown in specification Figures 1 and 2 does not alone
provide the basis for combining the applied prior art, see, e.g., Fritch, 972 F.2d at 1266, 23 USPQ2d
4 Compare the disclosure of the ion gun 206 in Hanak Fig. 2 for which the reference provides little
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