Appeal 2006-3358
Application 09/933,349
could have, perhaps, provided evidence in support of the view that Hu is not
enabling in response to the § 102(b) rejection. However, while a reference
must enable someone to practice the invention in order to anticipate under
§ 102(b), a non-enabling reference may qualify as prior art for the purpose
of determining obviousness under § 103. Symbol Techs., Inc. v. Opticon,
Inc., 935 F.2d 1569, 1578, 19 USPQ2d 1241, 1247 (Fed. Cir. 1991).
In any event, the reference is a U.S. patent. A patent shall be
presumed valid. 35 U.S.C. § 282. Hu’s claims do not limit the invention to
methods of fabricating indium columns of any particular height (e.g., 115
μm or taller). If the reference is believed to be not enabling, it is Appellants’
burden to adduce evidence in support of the position.
Moreover, Hu describes use of a commercially available interconnect
pad having substantially fixed dimensions. The reference also teaches the
artisan, however, how to make (and use) a similar structure that is not
limited to the fixed dimensions of the commercial product. Col. 2, ll. 25-35;
col. 5, ll. 16-25.
We conclude that the Examiner has established a case for prima facie
obviousness of the subject matter as a whole of representative claim 1 that
has not been effectively rebutted. We sustain the § 103(a) rejection of
claims 1-5, 9, and 10 over Hu.
CONCLUSION
The Examiner’s rejection of claims 1-5, 9, and 10 under 35 U.S.C.
§ 102(b) as being anticipated by or, in the alternative, under 35 U.S.C
§ 103(a) as unpatentable over Hu is affirmed with respect to § 103(a) but
reversed with respect to § 102(b). Since we have affirmed the rejection of
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