Appeal No. 2005-2100
Application No. 09/826,038
Because Funk does not provide the requisite suggestion to arrange the process
steps in the manner necessary to arrive at Appellant’s claimed invention the examiner
failed to meet his burden4 of establishing a prima facie case of obviousness.5 If the
examiner fails to establish a prima facie case, the rejection is improper and will be
overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
For the foregoing reasons, it is my opinion that the rejection of claim 6 under 35
U.S.C. § 103 over Funk is in error and should be reversed.
Apparently recognizing that the rejection of record cannot be sustained the
majority reaches outside of the record presented for our review to prop up the
examiner’s rejection with two new pieces of evidence. The majority relies on the Kirk
Othmer, Encyclopedia of Chemical Technology (Encyclopedia), to teach that wet
etching and dry etching are known to those of ordinary skill in the art and that “one
advantage of wet etching over dry etching is the absence of subsurface damage that is
common with dry etching.” Supra page 7. As I understand the record before us for
review, I do not believe there is any dispute that wet etching and dry etching were
4 “In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness.” In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993).
5 I recognize the majority’s assertion that “an ‘advantage’ is not evidence of
unexpectedly superior results which is required to rebut a prima facie case.” Supra
page 9, n. 2. In my opinion, this assertion puts the cart before the horse. Secondary
considerations of non-obviousness are not at issue until the examiner first makes out a
prima facie case of obviousness. Since the examiner has not provided the evidence
necessary to establish a prima facie case of obviousness we need not look to any
secondary considerations of non-obviousness.
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