Appeal No. 2004-2192
Application No. 09/414,520
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 Ex
parte Masham, 2 USPQ 1647, 1648 (Bd. Pat. App. & Int. 1987).
Also see In re Yanush, 477 F.2d 958, 959, 177 USPQ 705, 706 (CCPA
1973); In re Finsterwalder, 436 F.2d 1028, 1032, 168 USPQ 530,
534 (CCPA 1971); In re Casey, 370 F.2d 576, 580, 152 USPQ 235,
238 (CCPA 1967); and In re Otto, 312 F.2d 937, 939, 136 USPQ 458,
459 (CCPA 1963).
In the instant case, as pointed out by the examiner at the
bottom of page 4 of the answer, the prior art structure meets the
claims because the prior art apparatus is capable of performing
the intended use. Appellants do not provide arguments showing
that it is not capable of such.
In view of the above, we affirm the rejection of claims 1,
2, and 5 under 35 U.S.C. §103 as being unpatentable over Satou in
view of Ovshinsky.
II. The 35 U.S.C. § 103 rejection of claims 4, 6, 7, 9, and 10
as being unpatentable over Satou and Ovshinsky and further
in view of Akahori
We refer to page 4 of Paper No. 18 regarding the examiner’s
position in this rejection.
On page 8 of the brief, appellants argue that Ovshinsky
relates to a method for the improved microwave deposition of thin
films. The method does not relate to a plasma etching apparatus.
The examiner rebuts and states that a recitation of intended use
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