Appeal 2007-0127
Application 09/749,916
1 The Appellants’ third argument is that neither Degner nor Murai
2 recognized the cracking problem that was solved by the claimed 0.25 inch
3 and thicker electrode. (Br., p. 11, ll. 10-13). As such, it is urged, the applied
4 references could not have suggested a solution to the electrode cracking
5 problem. We are not persuaded by this rebuttal argument.
6 The flaw in this argument is that the prior art may be combined for
7 reasons which are not identical to that of the applicant to establish
8 obviousness. See In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311
9 (Fed. Cir. 1996), citing In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897,
10 1901 (Fed. Cir. 1990)(en banc). Degner teaches a thickness range value for
11 single silicon crystal to be used as an electrode. Murai would have solved a
12 different problem for one of ordinary skill in the art, specifically - one who
13 was confronted with the problem of looking for a useful resistivity for a
14 single crystal electrode.
15 Weighing the evidence pointed to by the Examiner against the
16 evidence pointed to by the Appellants in support of their respective cases,
17 we conclude that the Examiner established a prima facie case of
18 obviousness. To the extent the solution of the cracking problem is submitted
19 as unexpected results, see our discussion of the Hubacek declaration, infra.
20 The Appellants’ Rebuttal Evidence
21 The Appellants next contend that the evidence of unexpected results
22 overcomes the rejection and consequently rebuts the prima facie case of
23 obviousness. (Br., p. 12, lines 1-3). The evidence submitted was the Second
24 Declaration by Jerome S. Hubacek filed March 29, 2005. According to the
25 Appellants, there were 5 unexpected benefits: (a) reduced center-to-edge
14
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