Appeal No. 2000-1058 Page 5
Application No. 08/673,972
herein, we need only focus on two of the references applied
against the claims, namely, Coburn or Douglas since a
principal basis of each of the examiner’s rejections is that 1
those two references describe etch processes sufficiently
similar to appellants such that the etch process of either
Coburn or Douglas would inherently result in the formation of
a passivating polymer on an article as herein claimed by
appellants. See pages 4-6 of the answer.
Thus, a central question before us is whether the
examiner’s assertion of inherency is reasonable. We answer
that question in the negative since the examiner has not
provided a sufficient basis in fact and/or technical reasoning
to reasonably support the determination that the allegedly
inherent formation of a passivating polymer on an article
necessarily flows from the teachings of the applied prior art.
See Ex parte Levy, 17 USPQ 1461, 1464 (Bd. Pat. App. & Intf.
1990).
1The examiner does not explain how Campbell or Boswell,
and Tsuchimoto, as additionally applied in the examiner’s
second
§ 103 rejection would have made up for any deficiencies in
either Coburn or Douglas with respect to the alleged inherent
feature thereof.
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