Appeal No. 2002-1701 Page 6
Application No. 09/076,111
each reference, we "must consider the passages and references which point away from
the invention as well as those said to point toward it." General Tire & Rubber Co. v.
Firestone Tire Co., 349 F.Supp. 345, 359, 174 USPQ 427, 445 (N.D. Ohio 1972).
Here, although the examiner refers to a "benefit to be gained" from reducing the
thickness below 1 nm, (Examiner's Answer at 8), he offers no evidence of such a
benefit. His opinions regarding the benefit are "not 'evidence.'" In re Dembiczak, 175
F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999) (citing McElmurry v. Arkansas
Power & Light Co., 995 F.2d 1576, 1578, 27 USPQ2d 1129, 1131 (Fed. Cir. 1993); In
re Sichert, 566 F.2d 1154, 1164, 196 USPQ 209, 217 (CCPA 1977)). Because Saito
teaches away from reducing the thickness below 1 nm, and the examiner offers no
reference that points toward it, we are not persuaded that an artisan would have been
motivated to so reduce the thickness. Therefore, we reverse the rejection of claim 1; of
claim 26, which depends therefrom; of claim 5; of claim 27, which depends therefrom;
of claim 9; of claim 28, which depends therefrom; of claim13; of claim 29, which
depends therefrom; of claim 17; of claim 30, which depends therefrom; of claim 21; of
claim 31, which depends therefrom; and of claim 25.
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