Appeal No. 2002-2031
Application 09/115,553
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 appellants’ 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 Fritch, 972 F.2d 1260, 1265-
66, 23 USPQ2d 1780, 1783-84 (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.
In this instance, the examiner has failed to specifically address appellants’ contentions
that there is no similarity between the components of the soldering paste of Conn and of
Kawashima, and that the respective prior art pastes are used for entirely different purposes.
Thus, we find on the record no reason why one of ordinary skill in this art would have considered
adding a fatty acid or ammonium salt thereof to the soldering paste for aluminum and/or
aluminum alloy materials of Conn even though Kawashima discloses that this material is a
viscosity modifier in tin-lead alloy solder pastes. Indeed, we find that the mere fact that Conn
and Kawashima are globally related because each involves a “soldering paste” would not have
suggested to one of ordinary skill in this art that Kawashima is reasonably pertinent to the
problem of viscosity control of soldering pastes for aluminum and/or aluminum alloy materials
as disclosed in Conn, and thus would not have provided both the reasonable suggestion and the
expectation of success to use the fatty acids and ammonium salts thereof to solve that problem.
See, e.g., In re Clay, 966 F.2d 656, 23 USPQ2d 1058, 1060-61 (Fed. Cir. 1992). (“A reference is
reasonably pertinent if, even though it may be in a different field from that of the inventor’s
endeavor, it is one which, because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering the problem. Thus, the purposes of
both the invention and the prior art are important in determining whether the reference is
3 Answer, pages 3-5.
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