Appeal No. 2000-1103
Application No. 08/576,367
metal is equivalent to other materials suitable for molds such as ceramic, germanium or
gallium arsenide. We acknowledge that mold structures can be formed from a variety of
materials. However, the Examiner’s position is deficient for at least two reasons. First,
Wuensch discloses the mold material is electroconductive because after the polymer layer is
applied to the mold, another metal is electro-deposited on the polymer layer. (Col. 1, l. 63 to
col. 2, l. 15). The Examiner has not indicated that if the mold is formed from a material,
such as those claimed, would be suitable for the electro-deposition application of a metal is
on the intervening polymer layer. Second, while molds can be formed from various
materials, the Examiner has not indicated that the various materials were known at the time
of the invention to be suitable for microstructured molds. The mere fact that the prior art
could be modified as proposed by the Examiner is not sufficient to establish a prima facie
case of obviousness. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed.
Cir. 1992). The Examiner must explain why the prior art would have suggested to one of
ordinary skill in the art the desirability of the modification. See Fritch, 972 F.2d at 1266, 23
USPQ2d at 1783-84. The Examiner has not provided such an explanation. The 35 U.S.C.
§ 103(a) rejections of claims 18 to 30 are reversed.
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