Appeal No. 2002-0094 Page 7
Application No. 09/346,435
With regard to the routing step, Appellant’s broad brush statement that “[n]o such step is
taught or suggested by Hause, Bothra or any proper combination of these references” does not
adequately address the specific findings and conclusions of the Examiner; particularly, the
Examiner’s finding that routing as claimed would be inherently accomplished during the etching
step of Hause (Answer at pp. 9-10). A reference need not expressly teach or suggest something
that inherently occurs during the operation disclosed by the reference. See In re Best, 562 F.2d
1252, 1254, 195 USPQ 430, 433 (CCPA 1977)(quoting In re Swinehart, 439 F.2d 210, 169
USPQ 226 (1971): “[I]t is elementary that the mere recitation of a newly discovered function or
property, inherently possessed by things in the prior art, does not cause a claim drawn to those
things to distinguish over the prior art.”); In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82
(CCPA 1975)(Merely choosing to describe the process using different terminology does not
render the method patentable.); Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130
(1948) (“[M]anifestations of laws of nature [are] free to all men and reserved exclusively to
none. He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly
of it which the law recognizes.”).
We note that claim 15 does not require a step of forming dielectric layers much less one
made using a low K dielectric material. No teaching of this feature is, therefore, required to meet
the claim. Therefore, a discussion of Bothra is unnecessary.
We conclude that the Examiner has established a prima facie case of obviousness with
respect to the subject matter of claim 15 which has not been sufficiently rebutted by Appellant.
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