Appeal Number: 2006-0866
Application Number: 10/086,148
in any one or all of the references, rather, the test for obviousness is what the
combined teachings of the references would have suggested to one of ordinary skill
in the art. See Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015,
1025, 226 USPQ 881, 886-87 (Fed. Cor. 1985).
A disclosure that anticipates under 35 U.S.C. § 102 also renders the claim
unpatentable under 35 U.S.C. § 103, for "anticipation is the epitome of
obviousness." Jones v. Hardy, 727 F.2d 1524, 1529, 220 USPQ 1021, 1025 (Fed.
Cir. 1984). See also In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571
(CCPA 1982); In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA
1974).
ANALYSIS
As Nagaraj discloses a groove pattern which is selectively developed,
Nagaraj inherently discloses a groove pattern that is predetermined. A person
developing the groove pattern of Nagaraj would have to have a pattern in mind
before utilizing the laser in order to selectively develop the pattern. Such
determination in mind prior to the development of the pattern is a predetermination
of the pattern. The disclosure in Nagaraj that the texturizing in Nagaraj must
achieve a predetermined roughness supports this holding that the groove pattern is
predetermined. As such, the disclosure of Nagaraj inherently discloses the
texturizing of the bond layer.
Because Nagaraj discloses each and every element of the claimed subject
matter, the Nagaraj disclosure alone is sufficient to support a rejection of the
claims under 35 U.S.C. § 103. In addition, even if Nagaraj alone did not suggest
the claimed subject matter, as Nagaraj teaches that it is important that the thermal
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