Appeal NO. 2005-0577
Application No. 09/741,237
in Allman and Austin which would have led one of ordinary skill in
the art to form a photonic via through the layers (63), (40a),
(26a), and (26).
The legal conclusion of obviousness must be supported by
facts. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1976). Where the legal conclusion is not supported by facts, it
cannot stand. Id. In the instant case, as indicated supra, the
examiner has not provided sufficient factual evidence to make a
hole through the layers (63), (40a), (26a) and (26) described in
Allman.
CONCLUSION
For the above reasons, we (i) procedurally reverse the
examiner’s rejection of claim 1 under 35 U.S.C. § 102(b) and
claims 1, 2, and 16 under 35 U.S.C. § 103(a); (ii) enter a new
grounds of rejection of claims 1, 2, and 16 under 35 U.S.C. § 112,
second paragraph; and (iii) reverse the examiner’s rejection of
claims 12, 14-15 and 17 under 35 U.S.C. §103(a) over Allman in
view of Austin.
This decision contains a new ground of rejection pursuant to
37 CFR § 41.50(b) (effective September 13, 2004, 69 Fed. Reg.
49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September
7, 2004)). 37 CFR § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for
judicial review."
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