Appeal No. 2000-0422
Application 08/864,044
We reverse.
We first consider independent claim 1 for our analysis. In
response to the rejection of claim 1 (answer at pages 3 and 4)
under 35 U.S.C. § 103(a), Appellants discuss Iliou and Kukanskis
at pages 8 though 11 of the brief and conclude (id. at page 11)
that “there is no suggestion in either Iliou et al. or Kukanskis
et al. for combining these two teachings. They are two entirely
different arts, one is the art of bonding a metal backer to a
ground plane of a component with a thin film of conductive
adhesive and the other the art of applying a photoresist to an
underlying substrate and forming electrical circuitry by
photoresist and subtractive etching techniques”. The Examiner
responds (answer at page 5) that “[m]ore specifically, col. 1,
lines 35-35 (sic) and 42-49 thereof, Kukanskis clearly discloses
bonding one metal plate to another or bonding a plurality of
components together ....”
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); In re Oetiker, 977 F.2d 1443, 1446,
24 USPQ2d 1443, 1445 (Fed. Cir. 1992)), which is established when
the teachings of the prior art itself would appear to have
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