Appeal 2007-1351
Application 10/628,942
19. We sustain the rejection of claim 19. We do not sustain the rejection of
claim 21 because, as Appellant notes (Br. 6), claim 21 depends from claim
20, which is rejected under 35 U.S.C. § 103(a) over Stern and Adachi.
We turn next to the rejection of claims 1, 3, 5, 10, 11, 13-15, and 22
under 35 U.S.C § 103(a) as unpatentable over Stern. With regard to claim 1,
Appellant argues that Stern fails to teach or suggest a movable element that
is situated in an evacuated space below 0.1 atmosphere.
The Examiner notes, however, that Stern teaches that the movable
member is in an evacuated space. In particular, Stern describes a
manufacture in which the ambient gas in the space between the light storage
plate and the viewing substrate is partially evacuated and a selected gas is
“optionally” introduced. The substrate and plate may be held together by an
O-ring sealed with caulk, and by the differential air pressure with respect to
the partially evacuated chamber. (Stern col. 43, ll. 17-39).
Stern thus teaches that the movable element (28) may be situated in an
evacuated space. The reference does not express a lower bound with respect
to the degree of evacuation. We consider Stern’s teaching sufficient to shift
the burden to Appellant to provide evidence of nonobviousness of the
claimed range of “below 0.1 atmosphere.” That Stern might teach
evacuation for a different purpose is not controlling. “In determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls.” KSR Int’l Co.
v. Teleflex, Inc., 127 S. Ct. 1727, 1741-42, 82 USPQ2d 1385, 1397 (2007).
Because Appellant has not shown that the evidence fails to establish a
prima facie case of obviousness of the subject matter as a whole of claim 1,
we sustain the rejection of claim 1. Claims 3, 5, 10, 11, and 13-15, which
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