Appeal No. 2006-1193 13
Application No. 09/961,036
Patentability is based upon the claims. “It is the claims that measure
the invention.” SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121, 227
USPQ 577, 585 (Fed. Cir. 1985) (en banc). When making a patentability
determination, the claimed invention must be compared to the prior art
[emphasis added]. We agree with the examiner that Yi’s nominal labels of
“first,” “second, “third,” and “fourth” metal layers [col. 3, lines 6-13] should
not be interpreted as literally corresponding to the recited “first,” “second,
“third,” and “fourth” metal layers of instant claim 17. We note that it is the
claim that must be read upon the reference, and not the other way around.
Specifically, we agree with the examiner that nothing in claim 17
requires the recited first, second, third, and fourth metal layers to be
different metals [emphasis added]. We note that Agarwala teaches a non-
wettable layer 22 that corresponds to the instant claimed metallization [col.,
3, lines 66 and 67; see also Fig. 6]. Upon modifying Agarwala with Yi’s
teachings of phased layer 53 [as shown in Fig. 9], as suggested by the
examiner, we find that Yi’s chrome (i.e., chromium) layer 51 corresponds to
the instant claimed “refractory metal first layer over the metallization” [Yi,
Fig. 9; see also claim 17]. We further find that the first three of the eight
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