Appeal No. 2000-1005
Application 08/813,765
under 35 U.S.C. § 103 as being unpatentable over Babu in view of Karas further in view of
Canestaro.1,2
It is well settled that in order to establish a prima facie case of obviousness under §
103(a), the examiner must show that some objective teaching, suggestion or motivation in the
applied prior art taken as a whole and/or knowledge generally available to one of ordinary skill in
this art would have led that person to the claimed invention as a whole, including each and every
limitation of the claims, without recourse to the teachings in appellants’ disclosure. See
generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-
Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30
(Fed. Cir. 1996); In re Fritch, 972 F.2d 1260, 1265-66, 23 USPQ2d 1780, 1783-84 (Fed. Cir.
1992); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re
Laskowski, 871 F.2d 115, 10 USPQ2d 1397 (Fed. Cir. 1989); In re Fine, 837 F.2d 1071, 1074-
76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988). The requirement for objective factual
underpinnings for a rejection under § 103(a) extends to the determination of whether the
references can be combined. See In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34
(Fed. Cir. 2002), and cases cited therein.
We find that, when considered in light of the written description in the specification as
interpreted by one of ordinary skill in this art, see, e.g., In re Hyatt, 211 F.3d 1367, 1372, 54
USPQ2d 1664, 1667 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023,
1027 (Fed. Cir. 1997), In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989), the plain language of appealed claims 5 and 13 requires that the claimed method
comprises the steps of “pretreating the catalyst layer and the circuit pattern to remove a portion of
the catalyst layer and a portion of residual circuit materials from the substrate” (emphasis
supplied), “oxidizing the remaining residual circuit materials” (emphasis supplied) and
“removing the remaining catalyst layer and the oxidized residual circuit materials from the
substrate” (emphasis supplied).
1 These are all of the claims in the application. See the amendment of May 18, 1998 (Paper No.
7).
2 Answer, pages 3-5.
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