Appeal No. 2002-1847
Application 09/478,393
In order to establish a prima facie case of obviousness, 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 Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Fine, 837 F.2d 1071, 1074-76, 5
USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531-32 (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.
Contrary to appellants’ characterization of the manner in which the encapsulated
electroluminescent (EL) light strip is formed in the Gustafson references3 (brief, e.g., pages 5-6
and 8), we find that one of ordinary skill in this art would have found in these references the
teachings and inferences4 that the method of encapsulation of the EL light strip by extrusion with
“polymeric materials such as SurlynŽ, an ionomer resin, high density polyethylene, or
polychlorotrifluoroethylene” as well as polyvinylchloride, would result in a continuous, seamless
coating of the strip by the polymeric material (see Gustafson, ‘427, e.g., col. 4, lines 9-19 and 47-
60, and Figs. 2 and 7). Indeed, appellants employ the same materials (specification, page 7, lines
7-9) in “extruder station 64 [that] consists of a configuration of extruders, of the type well known
in the art, for extruding the thermoplastic housing over the circuit assembly, dies and
3 We note that the lineage of both of the Gustafson references begins with application
07/668,862, and the basic difference between the two is that Gustafson ‘427 has several more
embodiments.
4 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir.
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
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