Appeal 2006-1260
Application 09/956,411
0.3-5.0 nm, for the non-conducting . . . ‘buffer layer’ (see col. 3, lines 3-7)”
(Answer 9). The Examiner also notes that “independent claim 17 does not
require a specific thickness for the buffer layer” (id.).
Appellants disclose a buffer layer thickness “range of less than 10 nm
but greater than 0 nm” and a preferred buffer layer thickness range “of less
than 5 nm but greater than 0.5 nm” (Specification 10). Appellants disclose
thickness ranges for the buffer layer encompass or substantially overlap the
broad thickness range of from 0.3 to 5.0 and the preferred thickness range of
0.5 to 1.0 nm disclosed by Hung for the non-conducting buffer layer (col. 3,
ll. 3-5). We also note that Appellants and Hung disclose the use of heavy
alkali metal halides, such as potassium fluoride, rubidium fluoride and
cesium fluoride, to form the non-conductive buffer layer (Specification para.
bridging 9 and 10; col. 2, ll. 55-57). Since both Appellants and Hung
disclose the same material and the same thickness, there is reason to believe
that the non-conducting layer of Hung is effective to prevent at least some
degree of sputter damage as disclosed by Appellants.
In a situation where, as here, the claimed and prior art products appear
to be identical, the Patent and Trademark Office can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product. In re Best, 562 F.2d 1252, 1255,
195 USPQ 430, 433 (CCPA 1977). Whether the rejection is based on
“inherency” under 35 U.S.C. § 102, or on “prima facie obviousness” under
35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and
its fairness is evidenced by the inability of the Patent and Trademark Office
to manufacture products or to obtain and compare prior art products. Id. On
the record of this appeal, Appellants’ § 1.132 affidavit contains no proof in
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