Board reverses Examiner on double-patenting rejection
We agree with Appellants that the Examiner has not adequately provided evidence to support the basis of the double patenting rejections. (App. Br. 7-8).
According to the Examiner,
[a]lthough the conflicting claims are not identical, they are not patentably distinct from each other because the sole difference between the instant claims and the prior art is the addition of the Group VB precursor. However, it would have been obvious to one of ordinary skill in the art to recite the specific second element in the compound semiconductor in order to grow and create the desired semiconductor.
Ans. 3. Appellants argue
[t]he disclosure of the parent [7,115,166] and grandparent application [6,730,164] does not disclose or suggest any precursor or resulting material or layer comprising tantalum or niobium. This subject matter was added at the time of filing the present Continuation-in-Part application and could not have been suggested by the earlier filed applications.
App. Br. 8.
The Examiner has failed to identify any specific evidence to support the basis for the addition of the Group VB (i.e., tantalum or niobium) precursor. Therefore, the Examiner has not established that the claims of the cited patents are obvious variations of the claims in the present application. Accordingly, the Examiner’s rejections are reversed.
Separately, see Ex parte Varaprasad