Appeal 2006-2989
Application 10/298,129
(d) claims 20 and 21 over Griesshammer in view of Dumler and
Journal of Electronics,
(e) claims 24-31 over Griesshammer in view of Dumler, Journal of
Electronics, and Yamato, and
(f) claims 32-45 over Griesshammer in view of Dumler and the
admitted prior art found in the specification.
The Examiner’s rejection of claims 1-5 over Griesshammer in view of
Dumler fails to address one of the limitations of claim 1, namely, sorting the
silicon rods using a step deck classifier. The Examiner mistakenly states
that “apparatus limitations in process claims are given little or no weight in
determining patentability” (Answer 7, 3rd ¶). However, it is fundamental
that all limitations of a claim must be given consideration when determining
the differences between the claimed invention and the applied prior art. In
essence, the Examiner, in determining that the claimed step of using a step
deck classifier is entitled to little or no weight, has invoked a type of per se
rule that has been discredited by our reviewing court. See In re Brouwer, 77
F.3d 422, 37 USPQ2d 1663 (Fed. Cir. 1996), and In re Ochiai, 71 F.3d
1565, 37 USPQ2d 1127 (Fed. Cir. 1995).
In the present case, the Examiner must determine whether the prior art
would have provided a suggestion or a motivation to one of ordinary skill in
the art to use a step deck classifier in the claimed method of removing
impurities from comminuted polycrystalline silicon rods. We note that in
the Examiner’s rejection of claims 32-45, the Examiner has applied the
admitted prior art in the specification for, apparently, the proposition that the
claimed step deck classifier was known in the art at the time of filing the
present application. To wit, the Examiner states that “the admitted prior art
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