Appeal No. 2005-2100
Application No. 09/826,038
known in the art prior to the date of Appellant’s claimed invention. Instead, the
dispute on this record is whether the prior art of record teaches the method set forth in
Appellant’s claim 6. Further, while the majority highlights a number of statements in
the Encyclopedia, the rationale for citing these statements is less than clear. See id.
While the majority has not clearly expressed it on this record, it may be that the
majority is of the opinion that the combination of Funk with the Encyclopedia would
render Appellant’s claimed invention prima facie obvious to a person of ordinary skill
in the art at the time the invention was made. If this is so, it would appear that any
such rejection over the combination of Funk with the Encyclopedia would be a new
ground of rejection under 37 C.F.R. § 41.50(b). The majority, however, did not find
their reliance on the Encyclopedia raises to the level of a new ground of rejection,
therefore, the procedural due process provided for in 37 C.F.R. § 41.50(b) is not
available to Appellant. In my opinion, if the majority intends to rely on the
Encyclopedia in combination with Funk the majority should clearly state this intent on
the record and provide Appellant with the opportunity to respond as provided by 37
C.F.R. § 41.50(b).
The majority also points to page 1 of Appellant’s specification suggesting that
Appellant admits that a method was known in the art wherein an unspecified etching
step was performed, followed by the step of acquiring the dimension of the film, and
then another unspecified etching step. Supra page 7. The majority also notes that
Appellant’s specification suggests that as part of this “known” method “a feed back
technique is used rather than a feed forward technique.” Id. Other than suggesting
(supra page 9) “that the thickness of a film is a common measurement taken between
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