Appeal No. 1999-2485
Application 08/737,118
a prima facie case with respect to both of the grounds of rejection.
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 appellant’s 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.
Appellant acknowledges in the specification that rotogravure processes of producing
transfer printing papers by applying printable ceramic coloring pigments in a release composition
to the paper via transfer from a rotogravure cylinder are known, citing “DE-A-42 03 162”3 (e.g.,
pages 1-5). However, instead of applying this reference to the claims, the examiner has
assembled Nakatsuka, Yoshikawa, Hurst and Nakayama, contending that the combined teachings
of these references would have suggested a process of preparing transfer printing papers with a
rotogravure process, and that this combination along with other knowledge and observations that
could have been made by one of ordinary skill in this art, would have satisfied the limitations of
appealed claim 15 (answer, pages 4-6).
On this record, we must agree with appellant that the combination of references and
knowledge in the art taken as a whole as relied on by the examiner, would not have suggested the
claimed invention as a whole, including each and every limitation of the claims, to one of
ordinary skill in this art in the absence of appellant’s specification. While each of the references
- 2 -
Page: Previous 1 2 3 4 5 Next
Last modified: November 3, 2007