Appeal No. 2003-1501
Application 09/756,929
range than unidentified vacuum pumps which perform within the TORR pressure ranges stated in
the passages in the written description in the specification we discuss above. Thus, the vacuum
pump described by Rigali would be capable of performing in the TORR pressure ranges
disclosed by appellant in the specification.
Therefore, we find that it reasonably appears from this evidence that the examiner
correctly found that the vacuum pump in the apparatus of Rigali would necessarily inherently be
capable of removing at least some amount, however small, of by-products from the reaction
chamber as required by appealed claim 47 as we interpreted this claim above, even though, as
appellant points out, this claimed function for the vacuum pump is not described by Rigali.
Accordingly, the burden has shifted to appellant to establish by effective argument or objective
evidence that the vacuum pump described by Rigali cannot perform the function of removing
some amount, however small, of by-products from the reaction chamber as specified in appealed
claim 47 in order to patentably distinguish the claimed apparatus over that disclosed in the first
embodiment of Rigali under § 102(e). Appellant’s mere arguments that Rigali does not describe
the function of removing by-product from the reaction chamber fails to convince us that, on the
facts discussed above, the vacuum pump described by Rigali is inherently incapable of the
function set forth in the claim. See generally, In re Glass, 474 F.2d 1015, 1019, 176 USPQ 529,
532 (CCPA 1973); Ludtke, 441 F.2d at 663, 169 USPQ at 566.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of anticipation found in Rigali with appellant’s countervailing evidence of
and argument for no anticipation in fact and find that the claimed invention encompassed by
appealed claims 43, 44, 46 through 52, 58 and 59 is anticipated as a matter of fact under 35
U.S.C. § 102(b).
Turning now to the grounds of rejection under § 103(a), appellant’s arguments focus on
the following limitation in appealed claim 53: “a heat source providing heat inside said process
unit to cure the electronic packages.” Appellant submits that “the examiner does not identify any
disclosure (or suggestion) in Ito that meets the ‘curing’ functional limitation claimed” (brief,
page 17; emphasis in original deleted). Appellant further argues that there is no motivation or
suggestion to combine Rigali and Ito because Rigali is drawn to a system of cleaning work
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