Appeal No. 2006-1872
Application No. 09/769,376
parameters are discussed as preferences. Furthermore, according to the specification, “the
heating conditions should not be construed as being limited to these” (specification, p. 21, ll. 17-
19). Given the nature of these disclosures it is reasonable to conclude that the “surface
smoothness” of Sugawa’s claim 1 is inherently within the Ra range of 0.8 nm or less as claimed
given the similarities in the starting materials and processing. Because the materials and
processing are identical or substantially similar, it is eminently fair and acceptable to shift the
burden to Appellants and require them to prove that there is a patentable distinction between the
“surface smoothness” of Sugawa’s claim 1 and the claimed roughness, Ra, of 0.8nm or less.
Best, 562 F.2d at 1254, 195 USPQ at 433. This is particularly true, where, as here, the reference
represents work done in the same corporation. Appellants are in a better position to obtain the
prior art products and make the required comparisons than is the PTO. Id. at 1254, at 433-34.
Appellants have not provided such evidence.
We conclude that the Examiner established that claim 1, 4, and 5 are not patentably
distinct from claim 1 of Sugawa. Appellants have not convinced us otherwise.
Anticipation by Sugawa
For the reasons stated above, we find that the Examiner has established anticipation by
Sugawa.
Appellants additionally argue that Sugawa cannot realistically achieve a surface
roughness value of Ra = 0.8 nm or lower because Sugawa discloses a thickness accuracy of ±40
µm or lower (Sugawa, col. 7, ll. 45-51) as compared to a thickness precision of ±7 µm or lower
disclosed in Appellants’ specification (p. 28, ll. 7-9)(Brief, p. 16). According to Appellants,
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