Appeal 2007-0096
Application 09/969,467
col. 12, ll. 1-9). As an example, Miki shows the use of an ultraviolet lamp
with a wave length of 191nm used in such a combination process (Ex. 6).
This disclosure of Miki substantially corresponds with Appellant’s disclosed
UV irradiation which results in the formation of hydroxyl radicals in the
irradiated vapor. In this regard, we note that Appellant discloses that the
ultraviolet rays may be supplied with a wave length of 242 nm or less and
may be irradiated into the vapor and onto the substrate surface in forming
hydroxyl radicals (Specification 6). Inasmuch as Miki uses the same
approximate steps and materials as recited in the representative appealed
claim 1, it logically follows that the reference inferentially obtains the same
results in terms of hydroxyl formation. In re Myers, 401 F.2d 828, 159
USPQ 339 (CCPA 1968). The recitation of an alleged newly discovered
function or property, inherently possessed by processes in the prior art does
not cause claims drawn thereto to patentably distinguish over the prior art,
especially where, as here, the method steps, ingredients and products are or
appear to be substantially the same. See In re Best, 562 F.2d 1252, 195
USPQ 430, 433 (CCPA 1977).
In light of the above, Appellant’s arguments in the Brief to the effect
that Pokharna is not combinable with Miki for a lack of presentation of
motivation, a lack of presentation based on the nature of problem to be
solved, and/or a lack of a reasonable expectation of success are
unpersuasive. This is because a prima facie case of obviousness has been
established by the teachings of Miki without the need for any modification
based on the additional teachings of Pokharna. In a similar vein,
Appellant’s argument concerning the “consisting essentially of” clause in
claim 1 is ineffective in establishing a patentable distinction over the process
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