Appeal No. 95-1375
Application 08/023,602
Opinion
We have carefully considered the entire record in light of the respective positions advanced
by appellant and the examiner. In doing so, we will not sustain the rejection of the claims for
obviousness.
It is well settled that the examiner has the initial burden of establishing a prima facie case of
obviousness. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976). This burden can be satisfied
when the examiner provides objective evidence that some teaching or suggestion in the applied prior
art, or knowledge generally available, would have led one of ordinary skill in the art to combine the
teachings of the references and to produce the claimed subject matter. In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In the case before us, the examiner has not provided
a single, coherent reason, based on the applied reference or general knowledge of the art, as to why
it would have been obvious to one of ordinary skill in the art to arrive at the claimed method.
Claim 1, the sole independent claim on appeal, defines a three step process comprising (i)
laminating a first dielectric layer onto the surface of a substrate, (ii) forming a first protective
structure in the first dielectric layer and on the substrate using a photographic mask, and (iii)
machining the laminate structure along the first protective structure. According to appellant, the
point of novelty of the claimed invention is the formation of the protective structure to define regions
along which the laminate structure may be machined so that delamination of the laminate structure
does not occur (brief: p. 2). The examiner stated the rejection as follows:
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