Ex Parte Rolfson

Board of Patent Appeals and Interferences

May 16, 2005

10314857 (B.P.A.I. May. 16, 2005)

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The opinion in support of the decision being entered
today was not written for publication and is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte J. BRETT ROLFSON
______________

Appeal No. 2005-1105
Application 10/314,857
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ON BRIEF
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Before PAK, WARREN and OWENS, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
We have carefully considered the record in this appeal under 35 U.S.C. § 1341 including
the opposing views of the examiner, in the answer, and appellant, in the brief and reply brief, and
based on our review, find that we cannot sustain either of the grounds of rejection advanced by
the examiner on appeal: claims 1 through 3, 5 through 8, 21 and 22 under 35 U.S.C. § 102(b) as
anticipated by Benoit et al. (Benoit) (answer, pages 3-4); and claims 4 and 9 under 35 U.S.C.

1 The examiner has twice reject appealed claims 1 through 9, 21 and 22; the most recent
rejection of the claims was in the non-final Office action mailed March 10, 2004. See also 37
CFR § 41.31(a)(1) (effective September 13, 2004; 69 Fed. Reg. 49960 (August 12, 2004); 1286
Off. Gaz. Pat. Office 21 (September 7, 2004)).
Appeal No. 2005-1105
Application 10/314,857
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§ 103(a) as being unpatentable over Benoit in view of Bolandi et al. (Bolandi) (answer, page 5).2
Rather than reiterate the respective positions advanced by the examiner and appellant, we
refer to the answer and to the brief for a complete exposition thereof.
We agree with appellant’s position that the examiner has failed to make out a prima facie
case with respect to both grounds of rejection for the reasons pointed out by appellant in the brief
and reply brief, adding the following for emphasis.
We first interpret representative independent claims 1 and 21 by giving the terms thereof
the broadest reasonable interpretation in light of the written description in appellant’s
specification, including the drawings, as it would be interpreted by one of ordinary skill in this
art, without reading into these claims any limitation or particular embodiment disclosed in the
specification. See 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). We find that
the plain language of the claims specifies in pertinent part that only the surface of the substrate
which does not have a film disposed thereon is exposed to the liquid bath.
In order for Benoit to anticipate the appealed claims, the examiner must establish as a
matter of fact that, prima facie, the reference identically describes each and every element of the
claimed method, arranged as required by the appealed claims, either expressly or under the
principles of inherency, in a manner sufficient to have placed a person of ordinary skill in the art
in possession thereof within the meaning of § 102(b). See generally, In re Schreiber, 128 F.3d
1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997); Diversitech Corp. v. Century Steps, Inc.,
850 F.2d 675, 677-78, 7 USPQ 1315, 1317 (Fed. Cir. 1988); Lindemann Maschinenfabrik
GMBH v. American Hoist and Derrick, 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir.
1984). Whether the teachings and inferences that one skilled in this art would have found in the
disclosure of an applied reference would have placed this person in possession of the claimed
invention, taking into account this person’s own knowledge of the particular art, is a question of
fact. See generally, In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701 (Fed. Cir. 1995),

2 The appealed claims appear in the appendix to the brief. Claim 10 is also of record and has
been objected to by the examiner as being allowed in substance but dependent on a rejected base
claim (answer, page 10).
Appeal No. 2005-1105
Application 10/314,857
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and cases cited therein (a reference anticipates the claimed method if the step that is not
disclosed therein “is within the knowledge of the skilled artisan.”); In re Preda, 401 F.2d 825,
826, 159 USPQ 342, 344 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is
proper to take into account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw therefrom.”).
We find that as a matter of fact, Benoit would have taught one skilled in this art the step
of “submerging a portion [of the substrate] having a temperature-sensitive film deposited
thereon” into the heated liquid, wherein “the heated liquid must be chemically inert with respect
to the temperature-sensitive film deposited on the substrate and the optional barrier coating
material” (col. 3, ll. 1-5 and 62-65, and col. 4, ll. 13-19 and 46-52). We find no disclosure in
Benoit which provides either the teachings or inferences that, as a matter of fact, would have
placed one skilled in this art in possession of the claimed invention, and the examiner has not
established on this record that the knowledge of one skilled in the art of heating substrates would
have led this person to the claimed invention upon reading the disclosure of the reference. Thus,
the examiner has not established that Benoit provides a description of the claimed invention to
one skilled in the art within the meaning of § 102(b).
Indeed, the examiner’s contention that the teachings of Benoit would have led one of
ordinary skill in the art to immediately place the substrate in the heated liquid so that the
“temperature sensitive film would not come in contact with the heating liquid as it is coated on
the substrate” (answer, page 7; see also page 8) is, on this record, an issue of obviousness under
§ 103(a) considered with respect to the second ground of rejection. However, in order to make
out a prima facie case of obviousness within the meaning of this statutory provision, the
examiner must provide a factual foundation establishing that some objective teaching, suggestion
or motivation in the applied prior art taken as a whole and/or knowledge generally available to
one of ordinary skill in this art would have led that person to the claimed invention as a whole,
including each and every limitation of the claims arranged as required by the claims, without
recourse to the teachings in appellant’s disclosure. See generally, In re Rouffet, 149 F.3d 1350,
1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics,
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Fritch, 972 F.2d
1260, 1265-66, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992); In re Oetiker, 977 F.2d 1443,
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Application 10/314,857
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1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Laskowski, 871 F.2d 115, 10 USPQ2d 1397
(Fed. Cir. 1989); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir.
1988).
Here, the examiner’s contention that one of ordinary skill in the art would have
immediately reversed the substrate with respect to the heated liquid is clearly contrary to the
teachings of Benoit with respect to heating the temperature-sensitive film on the substrate by
immersing the film and at least a portion of the substrate in the heated liquid. We are of the
opinion that the modification of the method of Benoit as proposed by the examiner would require
wholesale revision of the method of this reference, rendering the same inoperable for the
intended purpose of heating the film on the substrate in the disclosed manner, which includes the
heated liquid filing any gap between the film and the substrate considered necessary by Benoit
(col. 4, ll. 13-19). Thus, on this record, we conclude that the examiner has failed to establish a
prima facie case of obviousness by pointing to a teaching, suggestion or motivation to heat the
film by immersing the non-film side of the substrate in the heated liquid, even though the method
of Benoit can be so modified. The disclosure in the reference that the entire substrate need not
be submerged does not provide the same. See generally, In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984)..
The examiner’s decision is reversed.

Reversed

Appeal No. 2005-1105
Application 10/314,857
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CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )

Appeal No. 2005-1105
Application 10/314,857
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Michael G. Fletcher
Fletcher, Yoder & Van Someren
P.O. Box 692289
Houston, TX 77269-2289