Ex Parte Lauffer et al - Page 7




            Appeal No. 2002-0942                                                          Page 7              
            Application No. 09/553,715                                                                        


                   In this case, we find ourselves in agreement with the appellants that the claimed          
            method for producing a capacitor embedded in a printed circuit board would not have               
            been obvious at the time the invention was made to a person of ordinary skill in the art          
            from the teachings of DiStefano.  Specifically, the step of "coating the dielectric material      
            on at least one side of the first conductor foil to a thickness of approximately 0.0015           
            inch" would not have been obvious at the time the invention was made to a person of               
            ordinary skill in the art from the teachings of DiStefano since (1) DiStefano does                
            specifically teach what the thickness of the dielectric material on at least one side of the      
            first conductor foil is; (2) the claimed film thickness of 1.5 mils has clear advantages as       
            pointed out by the appellants; and (3) there is no suggestion in DiStefano that the               
            dielectric material on at least one side of the first conductor foil be approximately             
            0.0015 inch, in fact, it would appear to us that the thickness of the dielectric material on      
            both sides of the first conductor foil would greatly exceed 1.5 mils.  Thus, when the             
            totality of the record is considered, it is our view that the evidence fails to establish a       
            prima facie case of obviousness with respect to the subject matter of claim 1.                    


                   For the reasons set forth above, the decision of the examiner to reject claim 1,           
            and claims 3 and 5 to 9 dependent thereon, under 35 U.S.C. § 103 is reversed.                     











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