Appeal No. 2006-1583
Application No. 10/351,826
We have carefully reviewed our original decision in light of Appellant’s request
and we find no error in the analysis or logic set forth in our original decision. With full
consideration being given to Appellant’s remarks1, we find no basis upon which to grant
Appellant’s request for rehearing. We, therefore, decline to make any changes to our
prior decision with respect to the claim noted above for the reasons that follow.
Appellant argues at page 2 of the Request that the Board failed to consider all
the evidence to ensure that under 35 U.S.C. § 112 the specification teaches those
skilled in the art how to make and use the full scope of the invention without “undue
experimentation”. Particularly, at pages 3 and 4 of the Request, Appellant states the
following:
It is submitted that the Board has failed to consider the evidence in the
record with respect to whether the specification teaches one of ordinary skill in
the art how to sputter deposit the material of the invention without “undue
experimentation”. Dr. Fan’s declaration, which is evidence that sputter
deposition in this field is usually conducted at room temperature, is
uncontradicted by the Examiner and yet the Examiner with the Board’s approval
has determined by fiat that a person or ordinary skill in the art could not
reproduce the sputter deposited film of the invention without undue
experimentation. This unsupported conclusion is exactly opposite to the
evidence in this record.
Based on the evidence of record, there is no reason to suppose any
experimentation is necessary to produce the claimed subject matter since Dr.
Fan’s declaration establishes the usual practice in the art and Dr. Auciello’s
declaration, see paragraph 8, states that sputter deposition always produces an
amorphous alloy, as claimed. Therefore, the Examiner has not met his initial
burden of proof by providing sufficient reasons for doubting the assertion of Dr.
Fan, See In re Wright, supra.
The Board echoed this unsupported opinion of the Examiner in its decision
1 Request for Rehearing at pages 1-4.
2
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