Appeal No. 2002-0942 Page 7 Application No. 09/553,715 In this case, we find ourselves in agreement with the appellants that the claimed method for producing a capacitor embedded in a printed circuit board would not have been obvious at the time the invention was made to a person of ordinary skill in the art from the teachings of DiStefano. Specifically, the step of "coating the dielectric material on at least one side of the first conductor foil to a thickness of approximately 0.0015 inch" would not have been obvious at the time the invention was made to a person of ordinary skill in the art from the teachings of DiStefano since (1) DiStefano does specifically teach what the thickness of the dielectric material on at least one side of the first conductor foil is; (2) the claimed film thickness of 1.5 mils has clear advantages as pointed out by the appellants; and (3) there is no suggestion in DiStefano that the dielectric material on at least one side of the first conductor foil be approximately 0.0015 inch, in fact, it would appear to us that the thickness of the dielectric material on both sides of the first conductor foil would greatly exceed 1.5 mils. Thus, when the totality of the record is considered, it is our view that the evidence fails to establish a prima facie case of obviousness with respect to the subject matter of claim 1. For the reasons set forth above, the decision of the examiner to reject claim 1, and claims 3 and 5 to 9 dependent thereon, under 35 U.S.C. § 103 is reversed.Page: Previous 1 2 3 4 5 6 7 8 9 NextLast modified: November 3, 2007