Appeal No. 1999-2077 Page 5
Application No. 08/589,251
teachings that iron, steel, nickel or any other magnetic metal
would have been a suitable metal for the domain 86. In this
regard, we note that the examiner has adduced no evidence to
contradict appellant’s characterization of the state of the
art at the time of appellant’s invention wherein
“[t]raditionally, magnetic components, such as inductors and
transformers, have been built as discrete devices for
incorporation onto printed [circuit] boards” (specification,
page 1, lines 28-30).
While we are satisfied that a person skilled in the art
at the time of appellant’s invention would have been aware
that some metals are non-magnetic and other metals are
magnetic, we find nothing in the teachings of Lemelson to
support a conclusion that such a person would have at once
envisaged magnetic materials as suitable metals for the uses2
contemplated by Lemelson and the examiner has not provided any
explanation or evidence to support such a conclusion. The
evidence adduced by the examiner is thus insufficient to
2Compare In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA
1962) (in addition to disclosing a generic chemical formula, the prior art
reference disclosed preferred substituents from which the court determined
that one skilled in the art would have at once envisaged each member of the
claimed class of compounds).
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