Appeal No. 2002-1169
Application No. 09/252,845
“sputter” (answer, page 6), appellants argue (reply brief, page
2) that “the claimed limitation is for a source biased to cause
cleansing and not merely to removing or depositing material by
the process of sputtering.”
To establish inherency, the record (i.e., the extrinsic
evidence) “must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and
that it would be so recognized by persons of ordinary skill.” In
re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed.
Cir. 1999). To date, none of the examiner’s findings
demonstrates that the source of electrical power in Gwinn must of
necessity perform the claimed “cleansing.” As indicated supra,
Gwinn expressly states that such “cleansing” will not be
performed in his ion implantation system. Thus, the 35 U.S.C.
§ 102(e) rejection of claims 1, 3 through 6, 11, 13, 15, 16, 21
and 22 is reversed.
The 35 U.S.C. § 103(a) rejection of claims 2, 7 through 10,
12 and 17 through 20 is reversed because the teachings of Bright
fail to cure the noted shortcoming in the teachings of Gwinn.
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007