Appeal No. 2002-1847
Application 09/478,393
972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992) (“The mere fact that the prior art
may be modified in the manner suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the modification.”).
With respect to the second and third differences noted above, we agree with appellants
that there is no structure associated with an EL light strip of Gustafson which can be said to be a
substrate of the same thermoplastic material used to encapsulate the strip, including the substrate.
While the examiner points to the bonding of an EL light strip to body 218 in Gustafson Fig. 5
(answer, pages 5-7), we find that Gustafson ‘345 discloses that EL lamp 220 is already
encapsulated by extrudate 236, and it is the encapsulated EL strip that it bonded to body 218 to
provide strip 210 (col. 3, line 65, to col. 4, line 3). The examiner does not provide any evidence
in support of his contentions with respect to the practices in the art with respect to the use of
thermoplastic substrates, and thus has failed to establish that one of ordinary skill in the art
would have modified the EL laminate light strip taught in Gustafson by attaching the same to a
thermoplastic substrate prior to encapsulation. See B.F. Goodrich Co. v. Aircraft Braking Sys.
Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996) (“When obviousness is
based on a particular prior art reference, there must be a showing of a suggestion or motivation to
modify the teachings of that reference. [Citation omitted.] This suggestion or motivation need not
be expressly stated. [Citation omitted.]”).
Accordingly, the examiner has failed to establish a prima facie case of obviousness with
respect to either of the grounds of rejection, and thus we reverse both grounds.
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