Appeal No. 2001-2673
Application No. 09/299,470 Page 15
structure for an identifying marking such that misalignment
during formation of the marking on the electrode pattern does not
cause the problems associated with the prior art.
We incorporate by reference our finding, supra, that the
prior art fails to disclose the form of the identifying marking
recited in claim 10. Namely, we find that prior art discloses a
semicircular marking while the claimed marking has a shape
comprising multiple sides. We find that the examiner’s stated
ground for rejection (answer, page 4), that “it would have been
obvious to one of ordinary skill in the art indicia or markings
could be any suitable shape,” is not a substitute for evidence of
motivation to modify the semicircular marking of the prior art to
arrive at appellants’ claimed invention. Accordingly, we find
that the examiner has not established a prima facie case of
obviousness with respect to independent claim 10 and,
consequently, has also failed to establish a prima facie case of
obviousness with respect to claims 11 through 17 which depend
therefrom.
From all of the above, we reverse the rejection of claims 10
and 11 through 17 under 35 U.S.C. § 102(a) as anticipated by or,
in the alternative, under 35 U.S.C. § 103(a) as obvious over the
prior art.
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