Appeal 2007-0127
Application 09/749,916
1 outlets. The Appellants also state that the combined teachings would not
2 include every feature recited in claim 21. (Br., p. 31, ll. 7-21).
3 The Appellants also argue that the unexpected results of the Hubacek
4 declaration are sufficient to overcome the prima facie case of obviousness.
5 (Br., p. 32, ll. 1-3).
6 The Appellants fail to recognize that "[t]he suggestion or motivation
7 to combine references does not have to be stated expressly; rather it ‘may be
8 shown by reference to the prior art itself, to the nature of the problem solved
9 by the claimed invention, or to the knowledge of one of ordinary skill in the
10 art.’" Medical Instrumentation and Diagnostics Corp v. Elekta AB, 344 F.3d
11 1205, 1221-22, 68 USPQ2d 1263, 1276 (Fed. Cir. 2003)(citation omitted).
12 In this instance, each claim element has been shown to be a standard
13 value in the art for electrode type, aperture size, resistivity, and thickness.
14 The art of parallel plate plasma etching of record, known to one of ordinary
15 skill in the art, itself suggests these values for the variables. The Appellants
16 have not shown any criticality to these claimed ranges.
17 Where general conditions of the appealed claim are disclosed in the
18 prior art, it is usually not inventive to discover optimum or workable ranges
19 by routine experimentation, and the Appellants have the burden of proving
20 any criticality. In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 218-19
21 (CCPA 1980); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA
22 1955). This they have failed to do.
23 The Hubacek declaration fails to overcome the evidence of
24 obviousness in that it contains conclusory statements not supported by
25 credible evidence for the entire scope of the claim. Moreover, in many
36
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