Appeal No. 95-5066
Serial No. 07/931,330
printed circuit on one or both of their surfaces" (page 1, lines 11-13). Thermoplastic resin and alumina
do not have the same chemical structure and the examiner has not explained why one of ordinary skill in
the art would have considered them to be "analogous" structures. Secondly, the examiner has not
explained what motivation the skilled artisan would have had for printing a circuit from iron, i.e., ferrous,
metallic particles as opposed to more conventional and much more efficient metals, such as silver, gold
or copper. Third, the examiner has not pointed out where Huebner teaches or suggests a "heavy" load
of ceramic filler. Fourth, even though a patent application need not provide a working example, here
appellant's disclosure explicitly recites raw alumina as an example of green material. Therefore, the
specification does provide an example
of a suitable foil composition. Fifth, the examiner has not cited Ketcham as part of this rejection.
When a reference is relied on to support a rejection even in a "minor capacity," ordinarily that reference
should be positively included in the statement of rejection. In re Hoch, 428 F.2d 1341, 1342 fn 3, 166
USPQ 406, 407 fn 3 (CCPA 1970). Thus, we have not considered the Ketcham disclosure in this
rejection. Therefore, this rejection is reversed.
c. Kaun in view of Kotchick and Huebner
Kaun, Kotchick and Huebner have been described above.
According to the examiner,
...to combine the ribbon printing step of Kaun in the process of Heubner [sic] to form
Applicant's claimed invention would have been obvious to one having had
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