Ex parte Baccini

Board of Patent Appeals and Interferences

Apr 6, 1999

07931330 (B.P.A.I. Apr. 6, 1999)

Application for patent filed August 18, 1992. 1
Claims 1 and 3 have been amended subsequent to the appealed rejection.2
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GISULFO BACCINI
____________
Appeal No. 95-5066
Application No. 07/931,3301
____________
HEARD: March 09, 1999
____________
Before SOFOCLEOUS, WALTZ, and SPIEGEL, Administrative Patent Judges.
SPIEGEL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's rejection of claims 1-3
and 5-7. Claims 8-11, the only other claims pending in the application, have been withdrawn from2
further consideration under 37 CFR § 1.142(b) as not readable on the elected invention.
We REVERSE.
Appeal No. 95-5066
Serial No. 07/931,330
Page 2
BACKGROUND
"Green-tape foils" are thin sheets, e.g., of uncured alumina, which have a circuit printed on one
or both surfaces. Holes are bored in a sheet and filled with a conductive paste. After the various
electrical circuits and connections have been printed on the sheets, they are stacked in precise
alignment, compressed and heated to form a single ceramic structure with a plurality of circuits
embedded therein. Coincident tack welding has been used to maintain alignment during stacking,
compressing and heating. However, tack welding compresses the sheet slightly so the thickness of the
weld spot is less than the thickness of the two adjacent sheets, i.e. the weld spot creates a small
depression. Consequently, as more sheets are stacked and welded at the same location, the depression
deepens. Misalignment and/or breakage of outer "green" sheets in the area of the deepening weld spot
results as they are pressed into the depression as welding continues. Alternatively, adhesives may be
manually applied to the sheets to bond adjacent sheets. The appellant's invention relates to a method of
bonding a plurality of individual "green-tape foils" to each other using staggered welds between
individual foils. Staggering the welds spreads the depression over different positions among successive
sheets, rather than concentrating the depression in the same weld area, thus addressing the
misalignment/breakage problem of coincident tack welds without the time, cost and inaccuracy of
manual adhesive application. (Brief pages 2-4)
Appeal No. 95-5066
Serial No. 07/931,330
Our consideration of this reference is based on an English translation thereof, a copy of which is3
provided to appellant with this decision.
Page 3
Claim 1 is illustrative of the subject matter on appeal and reads as follows:
1. Method of anchoring foils for green-tape circuits, whereby the foils have a
surface and are printed and dried, and are superimposed on each other in a
coordinated manner, the method comprising the steps of:
bonding at least a first green-tape foil to at least one other previously positioned
green-tape foil by means of at least one weld made by a source of heat on the surface
of one of said foils; and
bonding at least a second green-tape foil to said bonded foils on the surface of
said second foil displaced from said weld between said first foil and said previously
positioned foil.

The prior art references of record relied upon by the examiner in rejecting the appealed claims
are:
Newton 3,682,740 Aug. 08, 1972
Dubuisson et al. (Dubuisson) 4,814,030 Mar. 21, 1989
Kotchick 4,816,036 Mar. 28, 1989
Huebner 4,957,577 Sep. 18, 1990
Ketcham et al. (Ketcham) 5,089,455 Feb. 18, 1992
Hamuro et al. (Hamuro) 5,174,842 Dec. 29, 1992
(filed Oct. 30, 1990)
Buckley et al. (Buckley) 5,217,656 Jun. 08, 1993
(filed Jul. 12, 1990)
Kaun 5,219,673 Jun. 15, 1993
(filed Aug. 23, 1991)
Italplastic S.P.A. (Italplastic) 2,100,259 Mar. 17, 19723
(French Patent)
The prior art reference relied upon by this Merits Panel:
McGraw-Hill DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS, second edition,
Daniel N. Lapedes, Editor in Chief, published by McGraw-Hill Book Company, New York,
1978, page 1046.
Appeal No. 95-5066
Serial No. 07/931,330
The last Office action (paper no. 16, mailed September 8, 1994) also included 4
(i) a rejection of claims 1 and 2 under 35 U.S.C. § 103 as unpatentable over Berger (U.S. Patent 4,499,149)
and Reibach (U.S. Patent 3,616,200);
(ii) a rejection of claims 1 and 2 under 35 U.S.C. § 103 as unpatentable over Berger and Reibach in veiw of
Kotchick and/or Huebner;
(iii) a rejection of claim 3 under 35 U.S.C. § 103 as unpatentable over Berger and Reibach in view of Kotchick
and/or Huebner taken further in view of Buckley;
(iv) a rejection of claims 5-7 under 35 U.S.C. § 103 as unpatentable over Berger and Reibach in view of
Kotchick and/or Huebner taken further in view of Italplastic; and,
(v) a rejection of claim 2 under 35 U.S.C. § 112, fourth paragraph, as failing to further limit the subject matter
of the previous claim, i.e., claim 1.
In that these rejections were not repeated in the Substitute Answer, they are presumed to have been withdrawn. Ex
parte Emm, 118 USPQ 180, 181 (Bd. App. 1957).
There is an apparent typographical error on page 1 of the Substitute Answer where claims 1-3 are rejected5
as unpatentable over Kaun since both the last Office action (paper no. 16, mailed September 8, 1994 page 6) and
page 6 of the Substitute Answer both reject claims 1 and 2 as unpatentable over Kaun. In any event, it does not
affect the outcome of our decision.
The last Office action (paper no. 16, mailed September 8, 1994) also included a rejection of claim 3 under6
35 U.S.C. § 103 as unpatentable over Kaun in view of either Kotchick or Huebner, each taken further in view of
Buckley. In that these rejections were not repeated in the Substitute Answer, they are presumed to have been
Page 4
THE ISSUES4
The issues present for review are:
(1) whether the examiner erred in rejecting claims 1 and 2 under 35 U.S.C. § 103 as
unpatentable over Hamuro, Ketcham and Dubuisson;
(2) whether the examiner erred in rejecting claims 1 and 2 under 35 U.S.C. § 103 as
unpatentable over Kaun ;5
(3) whether the examiner erred in rejecting claims 1 and 2 under 35 U.S.C. § 103 as
unpatentable over Kaun in view of Kotchick and/or Huebner;
(4) whether the examiner erred in rejecting claim 3 under 35 U.S.C. § 103 as unpatentable
over Kaun, Kotchick and Huebner in view of Buckley ;6
Appeal No. 95-5066
Serial No. 07/931,330
withdrawn. Ex parte Emm, 118 USPQ 180, 181 (Bd. App. 1957).
The last Office action (paper no. 16, mailed September 3, 1994) also included a rejection of claims 5-77
under 35 U.S.C. § 103 as unpatentable over Kaun in view of either Kotchick or Huebner, each taken further in view of
Italplastic. In that these rejections were not repeated in the Substitute Answer, they are presumed to have been
withdrawn. Ex parte Emm, 118 USPQ 180, 181 (Bd. App. 1957).
Page 5
(5) whether the examiner erred in rejecting claims 5-7 under 35 U.S.C. § 103 as unpatentable
over Kaun, Kotchick and Huebner in view of Italplastic ; and,7
(6) whether the examiner erred in rejecting claims 1-3 and 5-7 under 35 U.S.C. § 103
over Hamuro in view of Newton.
According to the Supplemental Answer (pages 1-2), (i) the new grounds of rejection of claim 1
in the Substitute Answer under 35 U.S.C. § 112, second paragraph, as indefinite has been withdrawn
upon entry of the August 1, 1995 amendment to claim 1 and (ii) the rejection of claim 3 under 35
U.S.C. § 112, fourth paragraph, has been withdrawn upon reconsideration and entry of the February
6, 1995 amendment to claim 3.
DELIBERATIONS
Our deliberations in this matter have included evaluation and review of the following materials:
(1) the instant specification, including all of the claims on appeal, (2) appellant's
Appeal Brief with amendment (paper nos. 18 and 19), (3) the Substitute Examiner's Answer (paper no.
22), (4) appellant's Reply Brief with amendment (paper nos. 23 and 24), (5) the Supplemental
Examiner's Answer (paper no. 25), and (6) the above-cited prior art references.
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Serial No. 07/931,330
Page 6
OPINION
The examiner has the initial burden of establishing a prima facie case of obviousness. In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993); In re Fine, 837 F.2d
1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Piasecki, 745 F.2d 1468,
1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984). In rejecting a claim under 35 U.S.C. § 103, the
examiner must provide a factual basis to support the obviousness conclusion. In re Freed, 425 F.2d
785, 788, 165 USPQ 570, 572 (CCPA 1970); In re Warner, 379 F.2d 1011, 1014-17, 154 USPQ
173, 176-78 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). Based on the objective evidence of
record, the examiner is required to make the factual inquiries mandated by Graham v. John Deere
Co., 383 U.S. 1, 17, 148 USPQ 459, 469 (1966). The examiner is also required to explain why one
having ordinary skill in the art would have been led to modify
and/or combine the applied prior art to arrive at the claimed invention. To this end, the requisite
motivation must stem from some teaching, suggestion or inference in the prior art as a whole or from the
knowledge generally available to one of ordinary skill in the art and not from the appellant's disclosure.
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.
1988), cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986);
Appeal No. 95-5066
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ACS Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed. Cir. 1984). These showings by the examiner are an essential part of
complying with the burden of presenting a prima facie case of obviousness. In re Oeticker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
With this as background, we turn to the rejections of the appealed claims.
1. Rejection of claims 1-2 as unpatentable over Hamuro, Ketcham and Dubuisson
Harumo laminates ceramic green sheets which are to become electrical elements by heat
welding the sheets (i.e., foils) together as they are individually stacked using coincident
successive welding at the same location on each sheet using hot iron 11 (see Figure 3; column 2, lines
16-29, 50-53 and 55-59; column 3, lines 13-18, 41-46 and 53-65).
Ketcham makes sintered structures with multidimensional flexibility by mixing green materials,
such as aluminas, with sufficient solvent to obtain fluid vicosity, forming the mixture into thin sheets or
other preforms using conventional thin sheet or foil forming means, such as doctor blading, rolling,
printing, molding, extrusion, casting, etc., and sintering the thin sheets or preforms (column 3, lines 34-
46; column 4, lines 20-31 and 54-63; column 8, lines 36-44;
column 9, lines 46-48).
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Page 8
Dubuisson describes a monolithic substrate for an electronic power component which is formed
by a sintered stack of layers of dielectric material having an internal system of ducts for the circulation of
a cooling system (abstract; column 2, lines 10-46; column 2, line 67 - column
3, line 13). Such substrates can be used both for carrying semi-conductor devices at a high
density or as substrates for producing hybrid circuits (column 1, lines 17-20). As noted by Dubuisson,
use of power components or a high density of components, often necessitates
...dissipat[ing] a substantial amount of heat which is given off by the components. By
way of example, it is often necessary to dissipate an amount of power of the order of
35 watts by means of a substrate of standardized dimensions of 152.4 x 86.36 mm.
(column 1, lines 35-39)
The examiner acknowledges that Hamuro does not teach staggering welds between
successively welded sheets (Substitute Answer page 10, paragraph one). However, according to the
examiner, (a) Ketcham and Dubuisson suggest forming of green laminates with X-Y planar dimensions
of one or more meters, (b) formation of such meter-sized green laminates necessarily requires tack
bonding in at least one or several interior locations of the stacked sheets, and (c) a Dubuisson laminate
could not be tack welded without staggering or omitting at least one tack within the interior of the
multilayered green stack because the probability of a desirable interior
Z-directional portion of the stack being free of both electrical metallization and cooling channels
diminishes with the complexity of the laminate. Thus, the examiner concludes it would have
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been obvious to one of ordinary skill in the art (i) to tack bond the meter-sized Ketcham layers forming
the Dubuisson laminate to reduce misregistration of the layers as suggested by Hamuro; and, (ii) to
stagger the tack bonds because certain components in Dubuisson could not be
properly tack welded without staggering or omitting at least one tack within the interior of a large
Dubuisson multilayered green stack (Substitute Answer page 4, last paragraph to page 5, last
paragraph).
However, the examiner fails to identify where such a suggestion of using Ketcham layers with
X-Y planar dimensions of one or more meters to form a Dubuisson substrate can be found
in the applied prior art. Ketcham does provide green structures in "long continuous lengths or relatively
short sheets" (column 9, lines 47-48), e.g., "[n]arrow ribbons or sheets many meters wide" (column 8,
lines 44-45). However, the examiner has not explained why one of ordinary skill in the art would have
been motivated to completely reengineer and increase the mechanical complexity of the laminating
apparatus of Hamuro to permit staggered welding, e.g., by adding X-Y translation movement capability
of the existing hot irons or by increasing the number of hot irons and selectively controlling individual
application of the hot irons to the stacked sheets, as argued by appellant (Brief pages 18-19), so that
Ketcham "sheets many meters wide" could
be used to form a substrate which Dubussion suggests has "standardized dimensions of 152.4 x 86.36
mm" (column 1, lines 38-39). It would appear to be easier to simply cut a Ketcham sheet into smaller
Appeal No. 95-5066
Serial No. 07/931,330
The word "monolithic" is emphasized in the examiner's discussion of Dubuisson in the Substitute8
Answer on page 4 and the word "large" is used to characterize Dubuisson on page 5.
Page 10
sizes as Ketcham has done in several examples (see e.g., column 11, lines 27-28; column 15, line 63;
and, column 6, lines 49-51). While the references could be combined as the examiner argues, the
examiner has failed to provide a reason why the references should be combined. "Obvious to try" is
not the standard for patentability under 35 U.S.C. § 103. In re O'Farrell, 853 F.2d 894, 903, 7
USPQ2d 1673, 1681 (Fed. Cir. 1988); In re Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1596, 1599
(Fed. Cir. 1988).
Assuming arguendo that the examiner is relying on the word "monolithic" used by Dubuisson
for motivation, such reliance appears misplaced. "Monolithic" as defined in the McGraw-Hill8
DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS, second edition, means "constructed
from a single crystal or other single piece of material" (page 1046). For example, a "monolithic ceramic
capacitor" is defined as
A capacitor that consists of thin dielectric layers interleaved with staggered metal-film
electrodes; after leads are connected to alternate projecting ends of the electrodes, the
assembly is compressed and sintered to form a solid monolithic block" (Id., page
1046).
The scientific/technical definition of "monolithic" as a "single element" is consistent with the disclosure in
Dubuisson referring to joining two superposed substrates together "to form a single monolithic
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Page 11
element (by sintering, gluing, etc.)" (column 3, lines 3-13). Thus, Dubuisson does not appear to
suggest forming a huge laminate, e.g. with X-Y planar dimensions of one or more meters.
Since, on this record, the examiner has not provided factual evidence sufficient to support his
position, we reverse the rejection. A conclusion of obviousness must be based on evidence, not
unsupported arguments.
2. Rejection of claims 1-2 as unpatentable over Kaun
Kaun describes electrochemical devices, e.g., batteries, capacitors and fuel cells,
comprising a plurality of cells, wherein each individual cell includes a
laminate cell preassembly comprised of alternatively arranged generally parallel positive
and negative electrodes, and a separator and/or electrolyte formed of a very thin ionic-
conductive ribbon-like layer configured in a tight serpentine manner and physically
interposed between the electrodes. This basic laminate cell preassembly is layered on
itself, such as by winding or coiling it as a spiral to
form a laminate cell membrane, in the general shape of a flat disc and the cell membrane
is sandwiched between plate-like current collectors with the electrode interfaces
primarily perpendicular to the current collectors, to make up an electrochemical cell.
(column 3, lines 36-48)
The component materials for the electrodes, separator and/or electrolyte may be (a) in a flexible form
which is extruded and wound as thin ribbons, (b) in liquid or powder form which can be mixed with a
binder/solvent system to be extruded, tape cast or stencilled, or (c) applied directly by plasma
sputtering, for forming the intended ceramic and/or metallic layers (column 8, lines 9-29). Example 2
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illustrates coiling the cell preassembly on itself; compressing the coil slightly radially and axially between
rollers and heated stylus to assure electrolyte contact between adjacent layers; and, sintering both to
remove binder and to form a single disc.
According to the examiner,
[s]tacking foils using thermal bonding means necessarily bonds a third foil on the surface
of said second foil a displacement or distance from the prior weld formed between
previously bonded first and second foils. (Substitute Answer page 6, last sentence)
Initially, we do not agree with the examiner's determination that thermal bonding a coiled
laminate necessarily results in staggered welds. For example, if the four separate cell assemblies 70a-
70d in Figure 5 of Kaun were coiled as shown, compressed slightly, and heated with a stylus applied at
a point corresponding to "80" in the figure such that bonding occurred in a line
between "80" and the center core of the coil, then the "bond" between each of the four cell assemblies
or "layers" would be coincident, albeit at different relative distances from the "end" of each layer as
measured from where that layer attaches to the central core. Thus, it appears that the "foils" are
displaced from the welds in Kaun while the welds themselves are coincident. The examiner has
presented no evidence that it was known in the art to bond superimposed green-
tape foils using staggered welds as claimed. The process disclosed by Kaun for bonding or sealing
layered cell assemblies is different than the claimed method, although it includes steps of superimposing
cell assembly "foils" and sealing or "bonding" the layers.
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Based on the insufficient prior art evidence of obviousness presented by the examiner, we are
constrained to reverse the examiner's rejection.
3. Rejection of claims 1-2 as unpatentable over Kaun in view of Kotchick and/or Huebner
a. Kaun in view of Kotchick
Kaun has been described above.
Kotchick describes a method of fabrication of a fuel cell core. As depicted in Figure 9, anode
material (e.g., a cermet of cobalt or nickel metal with stabilized zirconia), cathode material (e.g.,
strontium lanthanum maganite), and electrolyte material (e.g., yttria-stabilized zirconia) or interconnect
material (e.g., magnesium-doped lanthanium chromite) are each mixed with a binder system in a
separate mixer 80 to have a plastic consistency, then roll milled 82 into single
layer tapes of each material 30 (anode), 31/33 (electrolyte/interconnect), 32 (cathode). During
this step each tape is friction bonded to the adjacent tape(s). Three of the single layer tapes are then
roll milled into a trilayer tape (which Kotchick designates as electrolyte and interconnect walls
comprising 30/31/32 and 30/33/32, respectively). After cutting each trilayer to the appropriate size and
molding one or both into a desired wall shape, the formed electrolyte walls are alternately stacked with
the formed interconnect walls until a fuel cell core of a desired size is obtained. Although not necessary,
corrugating the electrolyte tape by compression molding, vacuum formation or gear forming, achieves
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Page 14
greater surface area, thereby increasing fuel cell efficiency. The cell core is heated in a two-step cycle
wherein a temperature of approximately 1000E F extracts the binder and the second step heating to
approximately 1200-1600E F sinters the core to fuse the remaining ceramic particles to form a rigid fuel
cell core. (column 5, lines 4-20; column 9, line 37 - column 10, line 57)
The examiner has failed to make the required factual inquiries mandated by Graham v. John
Deere, Co. 383 U.S. 1 (1966); and, has failed to explain why or how one having ordinary skill in the
art would have combined the teachings of Kaun and Kotchick. Since, on this record, the examiner has
not established a prima facie case of obviousness, we reverse the rejection.
b. Kaun in view of Huebner
Kaun has been described above.
Huebner relates to structural panels, e.g., for use in aircraft components, which incorporate a
"honeycomb core" (column 1, lines 7-12). Specifically, Huebner fabricates a
corrosion-resistant, impact-resistant, and heat-resistant core by welding or otherwise melting
thermoplastic sheets together at spaced locations, thus eliminating the use of thermosetting adhesives,
solvents and other chemical bonding agents. In one embodiment, thermoplastic sheets are welded and
then expanded to form a honeycomb core. In another embodiment, the sheets are
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corrugated prior to welding (abstract; column 3, line 48 to column 4, line 31). The thermoplastic resin
can be reinforced with fillers of metal, glass, carbon, ceramic, or other plastics (column 4, lines 65-68).
Figure 1 illustrates staggered weld nodes 35, 55 between sheets 20-27.
Although the rejection is phrased as "Kaun in view of Huebner," the examiner's position
appears to be that it would have been obvious to one of ordinary skill in the art to use an induction-coil
welding technique which heats metallic ferrous particles deposited on node lines
by a magnetic field to perform the welding in Huebner's thermoplastic resin honeycomb core fabrication
method as suggested by Huebner (column 6, lines 3-8) and then to modify that welding technique by
using the stenciling step of Kaun to deposit the metallic ferrous particles
on the node lines because screen printing is considered an equivalent metal particle application process
in the art (Substitute Answer page 8). The examiner (i) maintains the thermoplastic resin sheet of
Huebner could be considered a foil corresponding to appellant's disclosure because "polymeric sheets
heavily loaded with organic or volatile components are used to form fired articles having high porosity"
and Ketcham suggests thin materials can be molded in the green state and subsequently sintered to a
dense or porous structure, and (ii) further notes the specification fails to provide an example of a
suitable foil composition or contents (Supplemental Answer paragraph bridging pages 14-15).
We agree with appellant that Huebner does not disclose or suggest green-tape foil substrates
(Brief page 9) as described in the specification, i.e., green-tape foils "consist[ing] of thin foils of alumina
in the raw state or of another like or analogous material, which have a
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printed circuit on one or both of their surfaces" (page 1, lines 11-13). Thermoplastic resin and alumina
do not have the same chemical structure and the examiner has not explained why one of ordinary skill in
the art would have considered them to be "analogous" structures. Secondly, the examiner has not
explained what motivation the skilled artisan would have had for printing a circuit from iron, i.e., ferrous,
metallic particles as opposed to more conventional and much more efficient metals, such as silver, gold
or copper. Third, the examiner has not pointed out where Huebner teaches or suggests a "heavy" load
of ceramic filler. Fourth, even though a patent application need not provide a working example, here
appellant's disclosure explicitly recites raw alumina as an example of green material. Therefore, the
specification does provide an example
of a suitable foil composition. Fifth, the examiner has not cited Ketcham as part of this rejection.
When a reference is relied on to support a rejection even in a "minor capacity," ordinarily that reference
should be positively included in the statement of rejection. In re Hoch, 428 F.2d 1341, 1342 fn 3, 166
USPQ 406, 407 fn 3 (CCPA 1970). Thus, we have not considered the Ketcham disclosure in this
rejection. Therefore, this rejection is reversed.
c. Kaun in view of Kotchick and Huebner
Kaun, Kotchick and Huebner have been described above.
According to the examiner,
...to combine the ribbon printing step of Kaun in the process of Heubner [sic] to form
Applicant's claimed invention would have been obvious to one having had
Appeal No. 95-5066
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We have also reviewed the Buckley and Italplastic references additionally applied in the rejection of9
dependent claims 3 and 5-7, respectively, but find nothing therein which remedies the deficiencies of Kaun, Kotchick
and Heubner discussed above regarding claim 1.
Page 17
ordinary skill in the art since such a combination of forming the Kaun fuel cell using the
Heubner [sic] honeycomb design is shown to be conventional in Kotchick. (Substitute
Ans. page 8)
The examiner has not explained why or how one of ordinary skill in the art would have
combined the isolated method steps of the references to obtain the claimed invention, e.g., why
or how the continuous ribbon printing step of Kaun would have been used to modify the spaced
welding process of Huebner, or what motivation one of ordinary skill in the art would have had
to expand the specific laminated structure of Kaun to form a honeycomb core fuel cell,
especially in view of Kaun's explicit disclosure of compressing the laminate on itself to assure
electrolyte contact between adjacent layers. Thus, the foregoing reasons and those reasons
given above in rejections 3a. and 3b., we find that the examiner has not established a prima facie case
of obviousness. Therefore, this rejection is reversed.
4 & 5. Rejection of claim 3 as unpatentable over Kaun, Kotchick and Heubner in view of Buckley and
Rejection of 5-7 as unpatentable over Kaun, Kotchick and Heubner in view of Italplastic
Since all the limitations of independent claim 1 are not disclosed or suggested by the applied
prior art of Kaun, Kotchick and Heubner under 35 U.S.C. § 103, we will not sustain the rejection of
dependent claims 3 and 5-7. Dependent claims are nonobvious under § 103 if the independent claims9
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from which they depend are nonobvious. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988).
6. Rejection of claims 1-3 and 5-7 as unpatentable over Hamuro in view of Newton
Hamuro has been described above.
Newton is directed to the production of collated forms, e.g., for use in business
processing machines such as tabulators and data processing machines (column 1, lines 28-35).
Adhesive is applied as short strips to successive sheets in a stack in a staggered pattern, usually not
exceeding three occurrences in a stack, so that the stack is only slightly thicker than the total thickness
of the sheets comprising the stack (column 2, lines 23-60), thus addressing such problems in the prior
art as form misaligment; forms shifting during folding; stiffening effect and thickness buildup due to glue
buildup, etc. (column 1, line 46 - column 2, line 2).
The examiner acknowledges that Hamuro does not teach staggering welds between
successively welded sheets (Substitute Ans. page 10, paragraph one). However, according to
the examiner, it would have been obvious
to stagger the tack welds between successive Hamuro et al. sheets applied to form a
multilaminate as does Newton ... to reduce the tendency of alignment or registration
defects caused by vertical alignment of bonds as taught by Newton. (Substitute Ans.
page 10)
Appellant argues there is no reason to combine Hamuro and Newton because Hamuro does
not disclose or suggest a problem with coincident welding of green-tape foils and because Newton is
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non-analogous art. Moreover, substantial structural modification would have to be made to the
mechanism of Hamuro to permit either additional lateral movement of the hot irons 11 or to provide
additional hot irons and selective control means therefore. Thus, appellant argues, the examiner is
engaged in hindsight reconstruction of the claimed invention. (Brief pages 14-19; Reply Brief pages 5
and 7-9)
Whether Hamuro and Newton are analogous prior art is a question of fact based on two
criteria (1) whether the art is from the same field or endeavor regardless of the problem addressed, and
(2) if not, whether the reference is still reasonably pertinent to the particular problem with which the
inventor is involved. In re Clay, 966 F.2d 656, 659, 23 USPQ2d 1058, 1061 (Fed. Cir. 1992).
Here, Hamuro relates to laminating ceramic capacitors while Newton relates to producing
collated paper business forms. Nonetheless, the examiner argues Hamuro and Newton are still
combinable because
...Newton is "reasonably pertinent" to Appellant's particular problem because of one
having had ordinary skill in the art would have had a reasonable expectation that a
reference directed to reducing the misalignment, uneven stacking, or sharp sloping (col.
1, lines 59-60 of Newton) caused by the increase in thickness of a stack resulting
from a total glue application on each form of the stack to produce a thick glue line,
or "tenting", would be helpful improving the problem of misregistration and stacking
defects in tack welded green sheets. (emphasis added, Substitute Answer sentence
bridging pages 16-17).
However, appellant's particular problem is not misalignment caused by an "increase" in stack thickness
in the weld area, but rather a "decrease" in stack thickness in the weld area. Moreover, glue
application techniques would not seem to be reasonably pertinent to welding techniques.
Appeal No. 95-5066
Serial No. 07/931,330
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Therefore, we agree with appellant that Newton is not properly combinable with Hamuro as analogous
art. (Brief pages 3, 7 and 19)
In addition, we agree with appellant that the examiner has failed to provide a reason or
motivation to combine Hamuro and Newton.
As stated in In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed.
Cir. 1988):
The consistent criterion for determination of obviousness is whether the prior art
would have suggested to one of ordinary skill in the art that this process should be
carried out and would have a reasonable likelihood of success, viewed
in the light of the prior art. Both the suggestion and the expectation of success must be
founded in the prior art, not in the applicant's disclosure. [citations omitted]
The court reemphasized at 473, 5 USPQ2d at 1531:
There must be a reason or sugestion in the art for selecting the procedure used, other
than the knowledge learned from the applicant's disclosure.
It is precisely that requisite reason or suggestion to employ staggered welds to bond a stack of green-
tape foils which the combined prior art teachings lack. Hamuro does not disclose or suggest a problem
heat welding ceramic green sheets (i.e., foils) together as they are individually stacked by coincident
successive welding at the same location on each sheet using hot iron 11. The examiner has not
provided any evidence that heat welding and glue are equivalent bonding means or that paper and
green-tape foils are equivalent “sheets”. At best, Newton's disclosure might invite one of ordinary skill
in the art to try to use staggered glue deposit to bond green sheets (i.e., foils) together as they are
individually stacked. However, that is not the claimed
Appeal No. 95-5066
Serial No. 07/931,330
Page 21
invention. We find that the only incentive to use staggered welding to anchor ceramic green
sheet (i.e., foils) together in this case is provided by appellant’s disclosure. Accordingly, we reverse the
examiner's rejection of claims 1-3 and 5-7 under 35 U.S.C. § 103 over Hamuro in view of Newton.
With regard to the Baesse Declaration, since the prior art relied on by the examiner fails
to establish a prima facie case of obviousness, we need not consider the appellant's rebuttal evidence.
In re Fine, 837 F.2d 1071, 1076, 5 USPQ2d 1596, 1600 (Fed. Cir. 1988).
OTHER MATTERS
In the event of further prosecution, the examiner and appellant should consider:
(a) there is an Information Disclosure Statement filed January 27, 1993 which apparently has
not been entered into the file and considered by the examiner; and,
(b) pending claims 6 and 7 still recite "inclusive" after "Claim 1" in their respective first lines,
contrary to the claims listed in appellant’s APPENDIX as being correct by the examiner.

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CONCLUSION
To summarize, the decision of the examiner (1) to reject claims 1 and 2 under 35 U.S.C. § 103
as unpatentable over Hamuro, Ketcham and Dubuisson is reversed, (2) to reject claims 1
and 2 under 35 U.S.C. § 103 as unpatentable over Kaun is reversed, (3) to reject claims 1 and 2
under 35 U.S.C. § 103 as unpatentable over Kaun in view of Kotchick and/or Huebner is reversed,
(4) to reject claim 3 under 35 U.S.C. §103 as unpatentable over Kaun, Kotchick and Huebner in view
of Buckley is reversed, (5) to reject claims 5-7 under 35 U.S.C. § 103 as unpatentable over Kaun,
Kotchick and Huebner in view of Italplastic is reversed, and (6) to
reject claims 1-3 and 5-7 under 35 U.S.C. § 103 as unpatentable over Hamuro in view of Newton is
reversed.
REVERSED
MICHAEL SOFOCLEOUS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
Appeal No. 95-5066
Serial No. 07/931,330
Page 23
CAROL A. SPIEGEL )
Administrative Patent Judge )
CAS/kis
Appeal No. 95-5066
Serial No. 07/931,330
Page 24
NIXON AND VANDERHYE, P.C.
1100 North Glebe Road, 8th Floor
Arlington, VA 22201-4714
APPEAL NO. 95-5066 - JUDGE SPIEGEL
APPLICATION NO. 07/931,330
APJ SPIEGEL
APJ WALTZ
APJ SOFOCLEOUS
DECISION: XXXED
Prepared By: S. Davis
DRAFT TYPED: 24 Feb 00
FINAL TYPED: