Appeal No. 96-1567 Page 5
Application No. 08/112,914
claimed subject matter is prima facie obvious must be supported by evidence, as shown
by some objective teaching in the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual to combine the relevant teachings
of the references to arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
After a careful review of the record in this case, we are compelled to agree with
appellant that the Examiner’s conclusion of obviousness is not supported by the types of
factual findings necessary to reach this conclusion. Our reading of the Examiner’s reasons
for the determination of obviousness causes us to conclude that the Examiner merely
believes the claimed invention to be obvious because it seems that it would have been
obvious. The Examiner attached marked up copies of the prior art figures 6a, 6b 18a and
18b which were relied upon by the Examiner to teach the relative orientation of the
invention as set forth in claim 13. We have reviewed the Examiner’s interpretation of the
prior art teaching and do not find that the combination of limitations set forth in claim 13 are
met by the teachings of Koyanagi.
Appellant argues that Koyanagi does not teach the limitation “a first isolated film
limited to less than the given width of the first opposed sidewall within a common
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