Appeal No. 2005-0202 Page 6
Application No. 09/348,654
We are cognizant of the fact that the specification indicates that the different sequences
of steps result in somewhat different results and that there are trade-offs for each sequence
(specification, pp. 4-5; see Reply Brief, pp. 2-3). However, the fact that there are some
differences does not negate the teaching that all three sequences were known by those of
ordinary skill in the art. Nor do the discussed differences provide the requisite level of evidence
needed to show criticality for the claimed sequence of steps. See In re Klosak, 455 F.2d 1077,
1080, 173 USPQ 14, 16 (CCPA 1972)(“[I]t is not enough to show that results are obtained which
differ from those obtained in the prior art: that difference must be shown to be an unexpected
difference”).
Appellant also argues that there are other differences between the claimed invention and
the prior art (Brief, pp. 8-9). These differences, however, are in the nature of temperature and
time adjustments; adjustments which one of ordinary skill in the art would have routinely made
to optimize the results of the process. It is well settled that where patentability is predicated
upon a change in condition of a prior art process, such as a change in temperature, the burden is
on the applicant to establish the nonobviousness of the process through unexpected results or
other evidence of secondary considerations. See In re Woodruff, 919 F.2d 1575, 1578, 16
USPQ2d 1934, 1936 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235
(CCPA 1955).
Appellant asserts that neither the cited art nor the Admitted Prior Art teaches that the
ashing temperature is a result-effective variable, i.e., the ashing rate is dependent on temperature
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