Appeal 2007-3964
Application 10/295,060
the diode terminals as taught by Kukulka, motivated by the recognized value
of a bypass diode in preventing cell damage (Answer 7-8, citing Kukulka,
col. 2, ll. 58-67 and col. 3, ll. 39-53). Appellants contend the references
would not have been combined because there is no suggestion coupled with
a reasonable expectation of success therein to wire Cavicchi’s conductive via
to accommodate Kukulka’s bypass diode structure and wiring (Br., e.g., 20-
22, 23-24, 27, and 30-31). See, e.g., In re Kahn, 441 F.3d 977, 985-88, 78
USPQ2d 1329, 1334-37 (Fed. Cir. 2006). The Examiner did not respond to
these arguments which address the thrust of the rejection (Answer 12-13).
Thus, Appellants’ arguments rebutted the prima facie case of obviousness,
and the Examiner did not reestablish a prima facie case. See, e.g., In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In
re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984).
Accordingly, in the absence of a prima facie case of obviousness, we
reverse this ground of rejection under 35 U.S.C. § 103(a).
We agree with Appellants’ arguments that the combined teachings of
Kukulka in view of Feinberg and of Glenn do not result in the limitations
with respect to the second electrical interconnection of claim 7 which are
included in dependent claim 9 (Br. 34 and 38-39; see Answer 13-14 and 14).
Accordingly, we reverse these two grounds of rejection of claim 9
under 35 U.S.C. § 103(a).
Finally, the Examiner has not stated and explained the cited ground of
rejection of claim 9 over the combined teachings of Müller and Feinberg in a
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