Appeal No. 1999-1451
Application No. 08/481,593
of reasoning to remove the electrofluid in light of the discussion throughout Klass that the
fluid forms the holding force. Klass discloses that the use of three phase power is
convenient and provides improved holding power. (Klass at col. 2, lines 58-62.) Klass
further discloses that the “holding power of the device is dependent upon the number of
electrodes employed, the number of phases of the potential employed, the magnitude of
the applied potential, and the nature of the electrofluid film. Conventional electrofluids
adapted for use in alternating potential fields may be employed to secure the chuck and
object to be held together.” (Klass at col . 3, lines 40- 45.) The examiner maintains that
the operation in a vacuum is discussed in paper number 15, page 6, paragraph 7, but that
portion of the Office action neither provides any line of reasoning to remove the electofluid
nor to use the apparatus in a vacuum. Therefore, the examiner has not established a
prima facie case of obviousness with the proposed modification of Klass.
In the answer at page 3 the examiner incorporates the rejection set forth in paper
number 15. The examiner further relies on the fact that Klass is classified in
class/subclass 361/234 where electrostatic chucks may be classified. This argument is
not persuasive as a motivation for skilled artisans to modify the teachings of Klass to
remove the electrofluid absent some teaching or line of reasoning. The mere fact that this
may be done and that the structure would then be arguably the same structure as a
conventional electrostatic chuck is immaterial to the analysis and conclusion with respect
to obviousness without any additional evidence by the examiner. This is merely
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