Appeal No. 1999-0761 3
Application No. 08/174, 957
OPINION
We have carefully considered all of the arguments advanced by the appellants and
the examiner, and agree with the appellants that the rejections of claims 1, 7 through
15 and 17 are not well founded. Accordingly, we reverse these rejections.
The Rejections under § 103
"[T]he examiner bears the initial burden, on review of the prior art or on any other
ground, of presenting a prima facie case of unpatentability." See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The examiner relies upon a
combination of two or three references to reject the claimed subject matter and
establish a prima facie case of obviousness. The premise of each rejection is the same.
It is the examiner’s position that, “[i]t would have been obvious to one of ordinary skill in
the art at the time the invention was made to have utilized a chelating agent in an
alkaline etchant.” See Answer page 8. The examiner further amplifies her position by
stating, “it would have been obvious to have utilized this one improved etching step
rather than the two less efficient etching steps taught by 1-212775.” See Supplemental
Examiner’s Answer, page 3. We disagree.
The admitted prior art relied upon by the examiner, Japan Patent Laid-open No.
1-212775, specification, page 3, discloses, “that etching is carried out in an aqueous
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