Appeal No. 1997-4235
Application No. 08/464,426
particular etchants for carrying out the etching steps
when making the radomes.
In an attempt to account for the differences between the
claimed invention and the closest prior art, the examiner relies
on the appellant’s discussion in the “Background of the
Invention” at pages 1 and 2 of the specification. (Answer, page
4-5.) On the basis of the evidence identified above, the
examiner concludes (id.):
In view of appellant’s disclosure of the prior art of
the problems with etching complex curvature articles
with ferric chloride etchants, there would be a
motivation of one of ordinary skill in the art at the
time the invention was made to try and find a better
etching solution capable of achieving better line
widths in complex curvature articles such as Burton’s
and Purinton’s radomes.
We agree with the appellant (appeal brief filed Aug. 31,
2001, paper 26, pages 8-10) that the examiner’s position is not
well founded. Nothing in the specification indicates that the
problems of the prior art, as described in the specification,
were known to those having ordinary skill in the art.
Accordingly, the examiner committed reversible error by using
the appellant’s own disclosure to fill the missing gaps in the
prior art references and relying on it as the motivation,
suggestion, or teaching to combine the prior art references.
W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220
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