Appeal No. 96-2185
Application 08/205,281
view of Uda. It is well settled that the examiner must satisfy his burden of establishing a prima facie3
case of obviousness by showing some objective teaching or suggestion in the applied prior art taken as
a whole or that 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 appellants’ 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); In re Dow Chemical Co., 837 F.2d
469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988).
We agree with appellants that the examiner has failed to make out a prima facie case of
obviousness with respect to the claimed invention as a whole for essentially the reasons set forth in
appellants’ brief, to which we add the following for emphasis. The appealed claims encompass process
having two molding steps to prepare molded circuits wherein an intermediate molded unit, produced as
specified, is further contacted with resin in a different mold to obtain a final molded unit. We find that
both Mraz et al. and Uda teach a process wherein there is a single molding step. In the process of
Mraz et al., the “lace curtain” circuit network is placed in a mold, and worked into the desired form
therein, that is, the circuit network is severed and bent by means of a punch in the mold framework,
with the resulting circuitry contacted with resin to form a final molded product. In the process of Uda,
each of a plurality of spark gaps contained in a frame is fixed by forming a separate molding piece
around each, followed by working the frame of the final molded product into the desired form, that is,
by severing and bending the frame, for insertion into sockets of a preformed unit.
We fail to find in the position advanced by the examiner any evidence and/or scientific
evidence why one of ordinary skill in this art would have modified the single molding step processes
disclosed by the teachings of Mraz et al. and Uda in order to arrive at the process having two molding
steps encompassed by the appealed claims. Indeed, it is manifest that the combined teachings of the
references applied by the examiner taken as a whole would not have resulted in the claimed process
because one of ordinary skill in the art would have modified the single molding step process of Mraz
3The references relied on by the examiner are listed at page 2 of the answer.
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