Appeal No. 1998-0335
Application 08/518,061
relationship would be determined by routine experimentation,
and there is no evidence of new and unexpected results on the
record [answer, pages 4-5]. Appellants argue that neither
Shimoma nor Matsuda teaches that there is an optimum
relationship between aperture diameter and electrode thickness
[brief, page 6].
We agree with appellants that the invention of claims
9-11 is not obvious within the meaning of 35 U.S.C. § 103 on
this record. If the record reflected that the prior art was
aware of some relationship between electrode thickness and
aperture diameter, then the examiner might be correct that
optimizing this relationship would require only routine skill.
There is no evidence on this record, however, that the prior
art recognized the claimed relationship at all. Absent some
evidence to suggest that there should be some relationship
between aperture diameter and electrode thickness, there is no
support for the examiner’s conclusion that the invention of
claims 9-11 results from routine experimentation. Therefore,
we do not sustain the rejection of claims 9-11.
In summary, we have sustained the examiner’s rejection
of claims 7 and 8 under 35 U.S.C. § 103, but we have not
11
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007