Appeal No. 97-0169
Application No. 08/194,369
[t]he basic shortcoming of the applied reference [Parobek] is that it does not
disclose or suggest a system which is capable of [automatically] identifying the
components of a test sample and then automatically using that identification to
select a calibration curve, which is then used to generate an indication of the
thickness of a coating on the same test sample. While the reference system
measures both the weight percentage of an element in a coating and the
thickness of the coating, it does not use the first measurement to produce the
second measurement. (See brief at page 4.)
We agree with appellant that the Parobek reference is lacking the claim 1 automatic
identification and use thereof to automatically select a calibration curve from stored curves
and measuring the coating thickness of the test sample using the selected calibration
curve.
As pointed out by our reviewing court, we must first determine the scope of the
claim. "[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d 1362, 1369, 47
USPQ2d 1523, 1529 (Fed. Cir. 1998).
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the initial burden of
presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532,
28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that the reference teachings would appear to be
sufficient for one of ordinary skill in the relevant art having the references before him to
make the proposed combination or other modification. See In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that the claimed
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