Appeal 2006-2499
Application 10/268,735
case of prima facie obviousness. See In re Peterson, 315 F.3d 1325, 1329-
30, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003).
Applying the preceding legal principles to the factual findings from
the record in this appeal, we determine that the Examiner has established a
prima facie case of obviousness in view of the reference evidence, which
prima facie case has not been adequately rebutted by Appellants’ arguments.
Further, we note that Appellants have not presented arguments to any
comparative evidence that would rebut the prima facie case of obviousness
(see the Brief in its entirety). We determine that the claims on appeal are
drafted in product-by-process format, and, therefore, we must make factual
inquiry into the differences between the prior art and claimed product, and
not the process for making it. See In re Wertheim, 541 F.2d 257, 271,
191 USPQ 90, 103 (CCPA 1976). We determine that the Examiner bears a
lesser burden of proof to establish a prima facie case of obviousness with
product-by-process claims, due to the inability of the Patent Office to make
and compare the prior art and claimed products. See In re Fessman,
489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974); In re Fitzgerald,
619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980). As shown by factual
finding (1) listed above, we determine that Lin discloses every limitation of
the claims on appeal with the exception of the barrier layer thickness and
conduction layer reflectance (Answer 3-4; Br. 4-5). As shown by factual
finding (2) listed above, Lin exemplifies a thickness for the barrier layer of
between 230 and 285 Angstroms. The mere difference in thickness of the
barrier layer of Lin and the barrier layer as claimed has not been shown to be
critical. See In re Woodruff, supra. Furthermore, as shown by factual
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