Appeal No. 2002-0942 Page 4
Application No. 09/553,715
In the rejection of claim 1, the examiner (answer, p. 3) first determined that
DiStefano discloses selecting a first conductor foil (see annotated Fig. 2
[attached to the Office action mailed March 13, 2001 (Paper No. 6)]); forming
clearance holes (see annotated Fig. 2) in first conductor foil (see annotated Fig.
2); selecting a dielectric material (see annotated Fig. 2); coating the dielectric
material on at least one side of the first conductor foil to a thickness (see
annotated Fig. 2); and layering the coated foil with a second conductor foil with
clearance holes on top of the coating of dielectric material thereby to form a
capacitive structure for being embedded in a printed circuit board (two foils 30 as
shown in annotated Fig. 2 are spaced by a dielectric material to form a capacitive
structure; Fig. 3 shows all the layers stacked to form a printed circuit board).
The examiner then ascertained1 that "DiStefano fails to disclose a thickness of
approximately 0.0015 inch." The examiner then concluded that
[i]t would have been obvious to one of ordinary skill in the art at the time
the invention was made as a matter of design choice to coat the dielectric
material to a thickness of approximately 0.0015 inch, since the applicants have
not disclosed that a thickness of approximately 0.0015 inch solves any stated
problem or is for any particular purpose and it appears that the invention would
perform equally well with the thickness shown in the DiStefano reference.
The appellants argue (brief, p. 9) that
an applicant for patent protection is not required to defend or support each and
every limitation in a claim. If, as the examiner suggests, the thickness is a 'matter
of design choice', the burden is on the Examiner to provide support for this
contention. Such support has not heretofore been forthcoming. In addition, the
fact remains that DiStefano et al do not produce a capacitor by the method
claimed by the Appellants. This is merely a conclusionary statement on the part
of the Examiner. It is well settled art that conclusionary statements do not satisfy
1 After the scope and content of the prior art are determined, the differences between the prior art
and the claims at issue are to be ascertained. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ
459, 467 (1966).
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