Appeal No. 2002-0293 Page 5
Application No. 09/192,564
have understood that this, in fact, would be the case. In regard to the examiner’s
remark on page 4 of the answer that ion beam polishing is only one option mentioned
by Malshe, and that other options are available to one of ordinary skill in the art to
reduce the surface roughness below 5 nm successfully, we note that Malshe does not
indicate that any of the other polishing techniques mentioned therein produces a
surface roughness of 5 nm or better2 and the examiner has provided no evidence that
such a technique was known in the art at the time of appellant’s invention. Rejections
based on 35 U.S.C. § 103 must rest on a factual basis. In making such a rejection, the
examiner has the initial duty of supplying the requisite factual basis and may not,
because of doubts that the invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in the factual basis. In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389
U.S. 1057 (1968).
For the foregoing reasons, we conclude that the evidence adduced by the
examiner is insufficient to establish a prima facie case that Malshe teaches or suggests
a diamond film having a surface roughness within the range recited in claim 7, let alone
a surface roughness within the narrower range of 0.5 to 3.0 nm recited in claim 13.
Thus, we are constrained to reverse the examiner’s rejection of claims 7 and 13, as well
2 In fact, the technique disclosed as Malshe’s invention yields a surface roughness of about 0.4 to
0.7 microns (400 to 700 nm), well outside the range called for in claim 7.
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007