Appeal 2007-2483
Application 09/899,183
those skilled in the art and thus need not spell out what would already be
apparent to them.29 Li's "middle" region is strikingly similar to Zhao's neck.
It is markedly narrower than the walls of the expansion chamber and spaces
the upper and lower components apart. Even assuming that Li happened
upon this configuration out of sheer serendipity, after the Zhao patent issued
the significance of the narrowed middle would have been clear to those in
the art.
The ordinary level of skill
We look to the evidence of record—the applicant's disclosure, the
cited references, and any declaration testimony—in resolving the ordinary
level of skill in the art. We focus on what those of skill in the art know and
can do.30
The specification offers little explicit guidance on what those in the
art knew and could do beyond following the teachings in the specification.
In particular, the background art cited is less relevant to the subject matter
claimed than the references the examiner cited. The art does appear to have
recognized that control of the temperature of the precursors before they are
sprayed is critical to success.31
Mitsubishi discloses a metal block 18 in contact with both a cooling
liquid flow path 20 and a nozzle 7.32 In describing this arrangement,
Mitsubishi provides little detail and no explanation of why it is necessary or
29 In re Paulsen, 30 F.3d 1475, 1480-81, 31 USPQ2d 1671, 1675 (Fed. Cir.
1994).
30 Ex parte Jud, 2006 WL 4080053 at *2 (BPAI) (rehearing with expanded
panel).
31 Spec. 4:13-27.
32 Spec. 9:19-10:4.
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