Appeal No. 2004-0784
Application 09/826,078
al. (Chen); and claim 15 under 35 U.S.C. § 103(a) as being unpatentable over Gupta and Wolf as
applied to claim 14 above, further in view of Chen Kunishima et al. (Kunishima).2
The respective positions advanced by the examiner and appellants are set forth in the
examiner’s answer and appellants’ brief and reply brief, and will not be reiterated here in their
entirety.
It is well settled that in order to establish a prima facie case of obviousness, the examiner
must show that some objective teaching, suggestion or motivation in the applied prior art taken
as a whole and/or knowledge generally available to one of ordinary skill in this art would have
led that person to the claimed invention as a whole, including each and every limitation of the
claim arrange as required by the claim, without recourse to the teachings in appellant’s
disclosure. See generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir.
1998); Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d
1626, 1629-30 (Fed. Cir. 1996); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-
1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32
(Fed. Cir. 1988).
We find that, when the claim terms of appealed claim 83 are given their broadest
reasonable interpretation in light of the written description in the specification as interpreted by
one of ordinary skill in this art, see, e.g., In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d
1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed.
Cir. 1989), the claim language plainly encompasses a method of forming nickel layers on a
plurality of substrates in any deposition chamber, of any configuration or other function, having
any heating element of any configuration or power, comprising at least heating the deposition
chamber with the heating element prior to and during the step of introducing a first substrate to
the chamber, during the step of depositing a layer of nickel on said substrate, during the step of
2 Answer, pages 3-5. We note that the admitted prior art is not cited in the statement of the third
ground of rejection in the answer or in the final rejection mailed October 30, 2002 (Paper No. 6),
even though it is relied on by the examiner in the rejection of appealed claim 14.
3 Appellants state that the appealed claims “stand or fall together as a group” (brief, page 6) and
present arguments based only on appealed claim 8. Thus, we decide this appeal based on
appealed claim 8. 37 CFR § 1.192(c)(7) (2003).
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