Ex parte OKUI et al.

Board of Patent Appeals and Interferences

Jun 29, 2000

08083838 (B.P.A.I. Jun. 29, 2000)

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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(2) is not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte KAZUYUKI OKUI
and MAKOTO SHIOKAWA
______________
Appeal No. 96-0898
Application 08/083,838
_______________
ON BRIEF
_______________
Before GARRIS, WARREN and KRATZ, Administrative Patent Judges.
WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner refusing to allow
claims 8 through 22 and 24 as amended subsequent to the final rejection, which are all of the claims
remaining in the application.1
We have carefully considered the record before us, and based thereon, find that we cannot
sustain the ground of rejection of the appealed claims, of which claim 8 is representative, under 35

1 See the amendment of November 4, 1994 (Paper No. 9), in which claim 23 was canceled.
Appeal No. 1996-0898
Application 08/083,838
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U.S.C. § 103 as being unpatentable over Marwick in view of Saito et al.2 advanced by the examiner on
appeal.3 It is well settled that in order to establish a prima facie case of obviousness, “[b]oth the
suggestion and the expectation of success must be founded in the prior art, not in the applicant’s
disclosure.” In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531(Fed. Cir. 1988).
Thus, a prima facie case of obviousness can be established by showing that some objective teaching or
suggestion in the applied prior art taken as a whole and/or knowledge generally available to one of
ordinary skill in the art would have led that person to the claimed invention as a whole, including each
and every limitation of the claims, without recourse to the teachings in appellant’s disclosure. See
generally In re Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992)
(Nies, J., concurring); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir.
1988); Dow Chemical, supra. We reverse the ground of rejection because the prior art as applied by
the examiner does not address the limitations of claim 8 and thus does not establish a prima facie case
of obviousness.
In order to consider the issues in this appeal involved with the application of the prior art to the
claimed invention encompassed by appealed claim 8 in the ground of rejection advanced by the
examiner on appeal, we first must determine the invention encompassed by this claim as it stands before
us, mindful that we must give the broadest reasonable interpretation to the terms thereof consistent with
appellants’ specification as it would be interpreted by one of ordinary skill in this art. In re Morris, 127
F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22,
13 USPQ2d 1320, 1322 (Fed. Cir. 1989). In considering the plain language of claim 8 and the
interpretation of the terms thereof in light of appellants’ specification as it would be interpreted by one of

2 The references are listed in the examiner’s answer of July 3, 1995 (Paper No. 14, page 3).
3 In response to our remand of August 31, 1999 (Paper No. 21), in which we required “a complete
statement of the ground of rejection under § 103” (page 2), the examiner supplied a second
supplemental examiner’s answer on October 20, 1999 (Paper No. 22). Thus, we have considered this
document to constitute the complete statement of the ground of rejection. In the absence of a response
to the examiner’s second supplemental answer, we find that appellants have elected to stand on the
record. In view of the examiner’s statements on page 5 of the second supplemental answer, we state
again here as we did in our remand (pages 1-2), that the objection to the disclosure set forth in the
examiner’s answer is not before us.
Appeal No. 1996-0898
Application 08/083,838
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ordinary skill in this art, we must agree with appellants (principal brief, pages 27-28; reply brief, pages
7-8) that claim 8 would not include a step or steps involved with the replacement of the naturally
occurring oxide film by an oxide layer formed by a pretreatment step, even in view of the transitional
term “comprising,”4 and that claim 8 specifies that the lubricant is applied on the surface of the aluminum
“alloy plate having a naturally occurring oxide film,” contrary to the position of the examiner (second
supplemental answer, page 4).
Upon carefully considering the combined teachings of the applied references to the limitations of
appealed claim 8, we agree with appellants’ arguments (principal brief, pages 25-26) that this
combination of references, and specifically the teachings of Marwick, differs from the claimed method in
the specific teaching that the “aluminum plate to be pretreated to form a strongly bonded artificial
surface layer thereon” (id., page 25; see Marwick, e.g., col. 1, lines 16-18, col. 4, lines 4-6 and 29-52,
and Example 2). Thus, we find that the issue raised by the difference pointed out by appellants is
whether one of ordinary skill in this art would have would reasonably modified the method thus taught
by the combined teachings of the applied references by applying the lubricant and subsequently the
adhesive of Saito et al. to the surface of “an Al alloy plate having a naturally occurring oxide film” rather
than replacing that oxide film with an artificial oxide film as taught in Marwick (id.). However, we
further find that the examiner does not recognize this difference in the statement of the ground of
rejection (second supplemental answer, pages 2-3) and does not provide any evidence or scientific
explanation in the second supplemental answer with respect to this issue in response to appellants’
arguments (pages 3-4).
Accordingly, on this record, we reverse the examiner’s ground of rejection because it is
inescapable that the combined teachings of the references as applied by the examiner taken as a whole
would not have resulted in the claimed method encompassed by the appealed claims. Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1050-54, 5 USPQ2d 1434, 1438-41 (Fed. Cir.). Thus, it is

4 See In re Baxter, 656 F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA 1981) (“As long as one
of the monomers in the reaction is propylene, any other monomer may be present, because the term
‘comprises’ permits the inclusion of other steps, elements, or materials.”)
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Application 08/083,838
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manifest that the only direction to appellants’ claimed method as a whole on the record before us is
supplied by appellants’ own specification.
The examiner’s decision is reversed.
Reversed
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
PETER F. KRATZ )
Administrative Patent Judge )
Appeal No. 1996-0898
Application 08/083,838
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David A. Randall, Esq
Lyon & Lyon, L.L.P.
633 West Fifth Street
47th Floor
Los Angeles, CA 90071