Appeal 2007-1893
Application 10/946,753
nanostructures, we fail to see how these techniques necessarily influence the
direction of growth as claimed.
Although Appellants indicate that such direction-influencing
techniques are well-known in the art (e.g., using electric or magnetic
fields),13 we simply cannot say that such techniques are necessarily present
in Shin – an essential requirement for anticipation. Therefore, we are
constrained by the record before us to reverse the Examiner’s anticipation
rejection of claim 30 and claim 31 dependent thereon.14
Claim 32
We will also not sustain the Examiner’s rejection of claim 32 for
reasons similar to those we noted with respect to claims 30 and 31. While
techniques other than physical contact with the topological structure may be
well known in the art, such a consideration is germane to obviousness—not
anticipation. In short, while such non-contact techniques (e.g., magnetic
fields or fluid flow) may in fact be used in Shin -- a possibility that
Appellants readily acknowledge -- nothing in the reference indicates that
these techniques are necessarily present. In short, mere possibilities (or even
probabilities) alone cannot justify anticipation. For that reason alone, we
cannot sustain the Examiner’s rejection of claim 32.15
13 See id. at 6.
14 Notwithstanding our conclusion regarding anticipation, we nevertheless
address the question of whether it would have been obvious to one of
ordinary skill in the art at the time of the invention to provide such direction-
influencing techniques in Shin in a new grounds of rejection. See p. 17-19,
infra, of this opinion.
15 However, like the limitations of claims 30 and 31, we address the
obviousness of this limitation in a new grounds of rejection. See id.
13
Page: Previous 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 Next
Last modified: September 9, 2013