Appeal No. 1997-3649 Page 5
Application No. 08/432,450
to be capable of being vaporized and/or carried away from the surface. Therefore, before removal of
the cover sheet, the infrared sensitive layer of Fan et al. does not reasonably appear to be ablatable.
Once the cover sheet is removed, a portion of the infrared sensitive layer is also removed and thus what
is left is not a “layer” within the context of this invention. Therefore, we cannot agree that it is
reasonable to find that the infrared sensitive layer of Fan et al. is inherently capable of being laser
ablated. Therefore, the Examiner has not established a prima facie case of unpatentability over Fan et
al.
Rejection over Fan
“A critical step in analyzing the patentability of claims pursuant to section 103(a) is casting the
mind back to the time of invention, to consider the thinking of one of ordinary skill in the art, guided
only by the prior art references and the then-accepted wisdom in the field.” In re Kotzab, 217 F.3d
1365, 1369, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000). “The invention must be viewed not with the
blueprint drawn by the inventor, but in the state of the art that existed at the time.” In re Dembiczak,
175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999) (quoting Interconnect Planning
Corp. v. Feil, 774 F.2d 1132, 1138, 227 USPQ 543, 547 (Fed. Cir. 1985)). To establish a prima
facie case of obviousness, “there must be some teaching, suggestion or motivation in the prior art to
make the specific combination that was made by the applicant.”
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