Appeal No. 2000-1569
Application 08/964,686
applied prior art as modified discloses each and every step as
required by the claims [answer, page 10].
The examiner’s rejection fails because the examiner has
ignored certain limitations recited in the claims. The
examiner’s position that the claimed steps are met by the
disclosure of the applied prior art is wrong. The step recited
in claim 1, for example, includes the feature “such that said
substrate material has a surface roughness of less than 4A.”
Thus, it is not enough for prior art purposes to simply find the
step of “removing said portion of said substrate material”
without regard to the size limitation recited in claim 1. Since
the examiner has ignored features of the claimed invention, the
examiner has failed to establish a prima facie case of
obviousness. Therefore, we do not sustain the examiner’s
rejection of claims 1, 25, 26, 30 and 31 under 35 U.S.C. § 103.
In summary, we have sustained the rejection of the
appealed claims under the first paragraph of 35 U.S.C. § 112, but
we have not sustained the rejection under the second paragraph of
35 U.S.C. § 112 or the rejections under 35 U.S.C. § 103.
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