Appeal No. 2002-1847
Application 09/478,393
additional extrusion related components” (id., page 10, line 21, to page 11, line 2).
Thus, we agree with the examiner that the differences between the claimed method
encompassed by the appealed claims and the Gustafson references are as follows: (1) appealed
claim 29 – the method of the Gustafson references encapsulates an EL light strip instead of a
light emitting diode (LED)light strip; (2) appealed claim 31 – the method of the Gustafson
references encapsulates an EL light strip that has an “aluminum foil base electrode 22” (e.g.,
Gustafson ‘345, lines 10-12, and Fig. 2) instead of an LED light strip affixed to a substrate made
of the same thermoplastic material that is continuously extruded; and (3) appealed claim 32 –the
method of the Gustafson references encapsulates an EL light strip that has an “aluminum foil
base electrode 22” (e.g., Gustafson ‘345, col. 3, lines 10-12, and Fig. 2) instead of any
“continuous length of assembled light circuits affixed to a thermoplastic substrate.”
With respect to the first difference, the examiner relies on Gross, which would have
disclosed an LED light strip covered with “a U-shaped protective translucent plastic cover 56,”
for use in “confined areas,” e.g., embedding the light strip in carpeting or other covering in a hall
way, but does not disclose the method for making the LED strip or materials of which it is made
(cols. 1-3 and FIGs. 1-5). The examiner posits that one of ordinary skill in this art would have
substituted the LED light strips of Gross for the EL light strips in the Gustafson method for
protection from moisture and the cracking of plastic cover 56 (answer, page 7). We must agree
with appellants that, on this record, the disclosures of the Gustafson references and Gross,
separately or combined, would not have provided one of ordinary in the art with the motivation
to encapsulate the LED strip of Gross by the method of Gustafson. Thus, we conclude that the
examiner has not pointed to some teaching, suggestion or motivation in the prior art to combine
these references. See Lee, supra; Smith Industries medical Systems, Inc. v. Vital Signs, Inc., 183
F.3d 1347, 1356, 51 USPQ2d 1415, 1420-21 (Fed. Cir. 1999); In re Mayne, 1043 F.3d 1339,
1342, 41 USPQ2d 1451, 1454 (Fed. Cir. 1997); Fritch, 972 F.2d at 1266, 23 USPQ2d at 1783;
ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 9292, 933 (Fed. Cir.
1984); In re Keller, 642 F.2d 413, 425-26, 208 USPQ 871, 881-82 (CCPA 1981). Indeed, the
fact that the LED strip of Gross could be encapsulated by the method disclosed by Gustafson
does not alone provide the basis for combining the applied prior art. See, e.g., In re Fritch,
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