Appeal No. 2001-0107
Application No. 09/143,505
obviousness requires more than proof of reasonableness. Most
inventions are, after all, reasonable. The additional
requirement is substantial evidence that the modification and its
reasonableness would have been recognized. The record developed
by the examiner is inadequate because it lacks substantial
evidence supporting positioning an exposure mask between the
chamber window and the substrate. The incidental character of
Kondo’s disclosures regarding masks leaves a vacuum that the
examiner’s attempts to fill by reference to common knowledge or
common sense cannot fill.
Further considerations
In the event of further prosecution, we recommend that the
examiner and Appellant consider the following issues.
a. What is the scope of the term “substantially block the
byproduct from reaching the window”? This term is present in
claim 1, but absent from independent claims 19 and 29, and all
claims dependent on the latter two but for claims 35 and 36,
which were added after the final rejection. (See Paper No. 13.)
The term was introduced to independent claim 1, apparently from
original dependent claim 5, in the amendment responding to the
first office action on the merits. (See Paper No. 5, filed May
27, 1999, at 1–2.) There is no limiting condition in the claims
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