Ex parte Kuster et al.

Board of Patent Appeals and Interferences

Jul 7, 2000

08115530 (B.P.A.I. Jul. 7, 2000)

Claim 17 was amended subsequent to the final rejection.1
The opinion in support of the decision being entered today was not written
for publication in a law journal and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KASPAR KUSTER and ANTON RUEGGE
____________
Appeal No. 1997-0091
Application No. 08/115,530
____________
ON BRIEF
____________
Before CALVERT, ABRAMS, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 2, 4, 5, 9 and 14-17. Claims 6, 7 and1
10-13 have been objected to as depending from a non-allowed
claim. Claims 1, 3 and 8 have been canceled.
We REVERSE.
Appeal No. 1997-0091 Page 2
Application No. 08/115,530
Appeal No. 1997-0091 Page 3
Application No. 08/115,530
In determining the teachings of Kuster, we will rely on2
the translation provided by the PTO. A copy of the
translation is attached for the appellants' convenience.
BACKGROUND
The appellants' invention relates to an apparatus for
coating board-shaped articles, especially printed circuit
boards (specification, p. 1). A copy of the claims under
appeal is set forth in the appendix to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Bosher 4,324,052 Apr. 13,
1982
Bossard et al. 4,559,896 Dec.
24, 1985
(Bossard)
Wenger et al. 4,926,789 May 22,
1990
(Wenger)
Kuster EP 0 541 879 A1 May 19, 19932
Claims 2, 4, 5, 9 and 14-17 stand rejected under 35
U.S.C.
Appeal No. 1997-0091 Page 4
Application No. 08/115,530
§ 103 as being unpatentable over Wenger in view of Bosher,
Kuster and Bossard.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejection, we make reference to the answer (Paper No. 18,
mailed April 30, 1996) and the response to the appellants'
reply brief (Paper No. 20, mailed July 30, 1996) for the
examiner's complete reasoning in support of the rejection, and
to the brief (Paper No. 17, filed February 12, 1996) and reply
brief (Paper No. 19, filed June 27, 1996) for the appellants'
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
Appeal No. 1997-0091 Page 5
Application No. 08/115,530
Evidence of a suggestion, teaching, or motivation to3
modify a reference may flow from the prior art references
themselves, the knowledge of one of ordinary skill in the art,
or, in some cases, from the nature of the problem to be
solved, see Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996),
Para-Ordinance Mfg. v. SGS Importers Int'l., Inc., 73 F.3d
1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), cert.
denied, 117 S. Ct. 80 (1996), although "the suggestion more
often comes from the teachings of the pertinent references,"
In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed.
Cir. 1998). The range of sources available, however, does not
diminish the requirement for actual evidence. That is, the
showing must be clear and particular. See, e.g., C.R. Bard
Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1352, 48 USPQ2d 1225,
1232 (Fed. Cir. 1998), cert. denied, 119 S. Ct. 1804 (1999).
A broad conclusory statement regarding the obviousness of
modifying a reference, standing alone, is not "evidence."
E.g., McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576,
(continued...)
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejection of claims 2, 4, 5, 9 and
14-17 under 35 U.S.C. § 103. Our reasoning for this
determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that would3
Appeal No. 1997-0091 Page 6
Application No. 08/115,530
(...continued)3
1578, 27 USPQ2d 1129, 1131 (Fed. Cir. 1993); In re Sichert,
566 F.2d 1154, 1164, 196 USPQ 209, 217 (CCPA 1977). See also
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999).
have led one of ordinary skill in the art to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
The appellants argue (brief, pp. 5-6) that the applied
prior art does not suggest the claimed subject matter. We
agree.
All the claims under appeal recite an apparatus for
coating printed circuit boards comprising, inter alia, a
coating station having coating means including a pouring
table, a vapor-removal and air drying station having a vapor-
removal drier, and an air processing module which is arranged
in a housing which adjoins an entrance side of the housing of
the vapor-removal drier and extends over and above the pouring
Appeal No. 1997-0091 Page 7
Application No. 08/115,530
table. However, these limitations are not suggested by the
applied prior art. In that regard, none of the applied prior
art teaches or suggests an air processing module which is
arranged in a housing which adjoins an entrance side of the
housing of the vapor-removal drier and extends over and above
the pouring table. To supply this omission in the teachings
of the applied prior art, the examiner made a determination
(answer, pp. 4-10) that this difference would have been
obvious to an artisan since the location of the air processing
module would have been an obvious choice of engineering
design. However, this determination has not been supported by
any evidence that would have led an artisan to arrive at the
claimed invention. In that regard, the examiner has not
applied any evidence that would have made it obvious at the
time the invention was made to a person having ordinary skill
in the art to have arranged the air processing module in a
housing which adjoins an entrance side of the housing of the
vapor-removal drier and extends over and above the pouring
table.
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In our view, the only suggestion for modifying the
applied prior art in the manner proposed by the examiner to
meet the above-noted limitations stems from hindsight
knowledge derived from the appellants' own disclosure. The
use of such hindsight knowledge to support an obviousness
rejection under 35 U.S.C.
§ 103 is, of course, impermissible. See, for example, W. L.
Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984). It follows that we cannot sustain the
examiner's rejections of claims 2, 4, 5, 9 and 14-17.
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CONCLUSION
To summarize, the decision of the examiner to reject
claims 2, 4, 5, 9 and 14-17 under 35 U.S.C. § 103 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1997-0091 Page 10
Application No. 08/115,530
MICHAEL W. GLYNN
CIBA-GEIGY CORPORATION, PATENT DEPARTMENT
520 WHITE PLAINS ROAD
P.O. BOX 2005
TARRYTOWN , NY 10591-9005
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JVN/dl