Appeal No. 2006-1164
Application No. 10/139,185
with Appellants’ Figure 3 disclosure), and again the Appellants do not argue
otherwise with any reasonable specificity.
These circumstances establish a prima facie case of unpatentability, which
the Appellants have failed to overcome on the record before us, based on the
theory that the respective systems of Stahlecker and Mekata necessarily and
inherently possess the functional capability defined by the claim under review. Id.
In this regard, we emphasize that, under these circumstances, it is the Appellants’
burden to prove that the Stahlecker and Mekata systems do not necessarily or
inherently possess the aforenoted capabilities and that the burden of proof is the
same whether the rejection is under Section 102 or Section 103. In re Best, 562
F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).
We hereby sustain, therefore, the Section 102 rejection of claim 32 over
Stahlecker and the Section 103 rejection of claim 32 over Mekata.
All of the other independent and dependent claims on appeal are directed to
a method of minimizing particle generation during handling of ultra pure liquids.
According to the Examiner, this claimed method “would be inherent during the
normal use and operation of the Stahlecker system” (Answer 4) and “would be
inherent during the normal use and operation of the Mekata system (Answer 5).
However, neither of these applied references contains any express or inherent
disclosure of handling liquids which are ultra pure or of minimizing particle
generation during the handling of such liquids.
In this latter regard, the Examiner argues that Stahlecker’s method of
minimizing the generation of foam, that is, bubbles of gas and liquid, satisfies the
Appellants’ claim requirement of minimizing particle generation. More
4
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007