Appeal No. 1999-2122
Application No. 08/564,659
§ 103 rejections of claims 135, 136, 166, 168, 177 and 178 cannot
be sustained on the grounds that the claimed subject matter is
indeterminent and thus cannot be assessed in relation to the
issue of obviousness.
We also cannot sustain the Examiner’s § 103 rejections of
claims 104-106, 109, 110, 112-114, 116-119, 121, 122, 125-134,
137-146, 148-150, 152-165, 167, 169-171, 175 and 179. As correctly
indicated by the Appellant in his brief, these claims, which fall
within claim groupings (a) through (g) defined on pages 20-22 of
the brief, require certain features that are not taught and would
not have been suggested by the applied prior art. These features
include, for example, the apparatus structure and method steps of
group (a) claims 105 and 125 wherein a grooved substrate is
provided with a deposition having a substantially uniform
thickness of sputtered atoms on the substrate and on the walls
of the groove in the substrate. The Examiner’s basic position
concerning each of the claim features argued on this appeal is
based upon the proposition that the prior art apparatus appears to
correspond to and must be capable of functioning the same as the
here claimed apparatus. For example, regarding appealed claim 105,
the Examiner points out that “[t]he claim is an apparatus claim”
and argues that “[t]here is no reason to believe that the apparatus
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