Appeal No. 97-2486
Application No. 08/308,983
USPQ 292, 295-96 (CCPA 1962) and In re Wilson, 424 F.2d 1382,
1385, 165 USPQ 494, 496 (CCPA 1970). Nevertheless, in this
instance, we are of the opinion that the examiner's rejection
of claim 38 cannot be sustained on the basis of those portions
of the claimed invention that are understandable.
As the examiner recognizes, claim 38 requires the step of
coating the entire cast body and thereafter removing the
coating from selected locations, while claim 39 requires the
step of masking certain locations of the cast body prior to
coating and thereafter removing the mask from those locations.
With respect to these limitations, the examiner has simply
stated that "[t]he coating techniques of claims 38-39 are
conventional" (answer, page 3). We must point out, however,
obviousness under § 103 is a legal conclusion based on factual
evidence (In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988)) and the mere fact that, as a broad
proposition, it might be known to remove a portion of coating
material from an object after coating the object and to mask
certain portions of an object before coating the object, does
not provide a sufficient factual basis for establishing the
obviousness of the specifically claimed method when
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