Appeal 2006-2650
Application 10/011,886
ANALYSIS AND CONCLUSIONS
We find that the facts and reasons set forth in the Examiner’s Answer
establish a prima facie case of obviousness as to claims 1-20. We further
find that Appellants have failed to rebut the Examiner’s prima facie showing
of obviousness. Accordingly, we affirm as to all three grounds of rejection
for essentially those reasons stated in the Examiner’s Answer. We note that
the Examiner has addressed, and persuasively demonstrated that each of the
appealed claims is prima facie obvious, although we do not view Appellants’
Brief as presenting separate arguments as to any individual claim. See 37
C.F.R. 41.37(c)(1)(vii) (“A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.”). The discussion below emphasizes those arguments which are
relevant to independent claim 1. (See id).
An appellant may overcome a rejection by showing insufficient evidence
of prima facie obviousness. In re Kahn, 441 F.3d 977, 985-86, 78 USPQ2d
1329, 1335 (Fed. Cir. 2006). Appellants argue that the Examiner failed to
establish a prima facie showing of obviousness because there would be no
expectation of success in modifying/combining the applied prior art for at
least the following reasons: (1) Kasami’s stack is intended for use with light
having wavelengths of 380 to 420 nm while the GeTe layer in Tyan is
intended for use with light having a wavelength of 830 or 860 nm (Br. 8)
and (2) the benefits ascribed to the addition of oxygen and/or nitrogen
pertain only to the specific multilayer structures of the cited references (Br.
23-25).
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