Appeal No. 97-1037
Application 08/467,869
cated to solve a particular problem and/or yield any unexpected
or unexpectedly good result. Therefore, we affirm the rejection
of claim 5, and the rejection of claim 3 which stands or falls
therewith.
The argument advanced by appellant in the main and
reply briefs (Paper Nos. 20, 22, and 25) has not persuaded us
that the content of claims 1 and 5 is patentable under 35 U.S.C.
§ 103. Contrary to the view taken by appellant (main brief,
page 9), we determined above that the combined teachings would
have been suggestive of the claimed invention. While appellant
faults the references for not suggesting the “importance” of
having a thin damping layer (main brief, pages 9 and 11), we note
that the brief does not refer us to any portion of the present
specification that expressly sets forth the importance of having
a thin damping layer, and we can find none. While appellant
views the teaching of a thinner damping layer by Niwa as a mere
happenstance (main brief, page 10), this argument nevertheless
cannot detract from Niwa’s explicit teaching (column 5, lines 36
through 39) of a thinner damping layer. Appellant’s assertion
that Niwa teaches away from a thinner damping layer (main brief,
page 11) is clearly based upon a misapprehension of the docu-
11
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007