Appeal 2007-1932
Application 11/066,550
Second, the Examiner has not directed our attention to any evidence in
Okazaki or the other references relied on supporting the use of a patterned
intaglio-like printing plate including a hydrophobic interface. Indeed, the
materials taught by Okazaki—metals, ceramics, and glass (FF 9)—are well-
known to be high-surface energy, hydrophilic materials. In particular, the
Examiner has not explained why changing the hydrophilic printing plates
suggested by Okazaki to hydrophobic materials as required by
Zschieschang's claimed subject matter would have been obvious. This lack
highlights the absence of a reason, based on the record, for modifying
Okazaki.
Although the Supreme Court recently rejected a rigid application of
the teaching, suggestion, or motivation test in an obviousness inquiry in KSR
Int’l Co. v. Teleflex Inc., 550 U.S. ___, 127 S.Ct. 1727, 82 USPQ2d 1385
(2007), the Court acknowledged the importance of identifying “a reason that
would have prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention does.” Id at
1731, 82 USPQ2d at 1396. We need not—and do not—decide whether
Zchieschang's "teaching away" arguments (e.g., Br. at 11) are correct; but
we agree that the Examiner has not come forward with evidence or argument
explaining a conclusion of obviousness based on Okazaki.
On appeal, Zschieschang has carried its burden of demonstrating that
the Examiner erred by failing to come forward with evidence supporting a
prima facie case of obviousness.
(Fed. Cir. 2000) (affirming because the Board's and the examiner's analysis
was "sufficient to appraise [the court] of the basis" of the rejections.)
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