Appeal No. 2002-0544
Application No. 09/095,157
corrosive metal does not support obviousness as it fails to
provide sufficient reason for one skilled in the art to
substitute gold for the brazing material of Fujii (brief, pages 6
& 7).
In response to Appellants’ arguments, the Examiner asserts
that gold is a well known brazing material that does not corrode
in air (answer, page 6). The Examiner further points out that
Fujii indicates desirability of corrosion resistance and strength
in the joint (page 9, lines 20-21) and concludes that “one of
ordinary skill in the art would use gold as the main component
for the joint layer of Fujii []” (id.).
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993). The court further reasons in
Karsten Mfg. Corp. v. Cleveland Gulf Co., 242 F.3d 1376, 1385, 58
USPQ2d 1286, 1293 (Fed. Cir. 2001) that for an invention to be
obvious in view of a combination of references, there must be
some suggestion, motivation, or teaching in the prior art that
would have led a person of ordinary skill in the art to select
the references and combine them in the way that would produce the
claimed invention. However, “the Board must not only assure that
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