Appeal No. 2006-1872
Application No. 09/769,376
roughness and the single cited measurement of the support in Sugawa “refutes the Examiner’s
assertion of inherency” as argued by Appellants (Brief, p. 13). The Examiner’s assertion of
inherency is based upon the use of the same epoxy resin in the same manner. It is the similarities
in the starting material and the processing that supports the reasonableness of the conclusion of
inherency including the similarity in the Ra value for the support in the two processes. Based on
the evidence, it is reasonable to conclude that the free surface, i.e., the surface opposite the
support, would have an Ra in the claimed range. See In re Spada, 911 F.2d 705, 708, 15
USPQ2d 1655, 1657-58 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433-
34 (CCPA 1977).
In the Reply Brief, Appellants dispute the Examiner’s finding that the epoxy resin is used
in the same manner as Appellants’ epoxy resin (Reply Brief, p. 11). According to Appellants,
they describe particular characteristics “such as, for example, leveling agents (page 17, first full
paragraph), viscosity (page 18, first full paragraph), heating conditions and temperature
fluctuations during curing (page 18, second full paragraph and page 21, second and third full
paragraphs) that are different or omitted from Sugawa ‘518’s disclosure such that Sugawa ‘518
would not necessarily produce a surface roughness as believed by the Examiner.” (Reply Brief,
p. 11). At the hearing, Appellants’ representative conceded that there is no material difference
between the leveling agents described at page 17 of the specification and the leveling agents
described in Sugawa (Sugawa, col. 6, ll. 11-18). That leaves the differences between the
viscosity teachings, heating conditions and temperature fluctuations. But Appellants’
specification does not disclose the viscosity ranges, heating conditions, and temperature
fluctuation ranges as necessary to obtain a surface roughness, Ra, of 0.8 nm or less, those
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