Appeal No. 2002-1640
Application No. 09/296,806
I. The 35 U.S.C. § 103 Rejection
Beginning on page 4 of the brief, appellants argue that
Johnsgard does not recognize the relationship between the
thermal conductivity of the lift pin and the thermal
conductivity of the susceptor. Appellants also argue that
Johnsgard’s process is for rapid thermal processing and not for
thin film growth processing. Appellants argue that Tietz is
from the field of chemical vapor deposition. Appellants argue
that a review of the entire chapter of Askeland, rather than
just the pages provided by the examiner, shows that there is no
suggestion to select carbon from the “great universe” of ceramic
type materials. (brief, pages 4-9).
On page 3 of the answer, with regard to Johnsgard, the
examiner rebuts and states that the manner in which an apparatus
operates is not germane to the issue of patentability of the
apparatus itself. We disagree with the examiner’s conclusion of
obviousness for the following reasons.
A recitation with respect to the material intended to be
worked upon by a claimed apparatus does not impose any
structural limitations upon the claimed apparatus, which
differentiates it from a prior art apparatus satisfying the
structural limitations of that claimed. See Ex parte Masham,
2 USPQ2d 1647, 1648 (Bd. Pat. App. & Int. 1987). Also see In re
Rishoi, 197 F.2d 342, 344, 94 USPQ 71, 72 (CCPA 1952); and
In re Young, 75 F.2d 996, 997, 25 USPQ 69, 70 (CCPA 1935).
Similarly, a recitation with respect to the manner in which a
claimed apparatus is intended to be employed does not
differentiate the claimed apparatus from a prior art apparatus
satisfying the structural limitations of that claimed. See
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