Appeal No. 2003-0001
Application 09/360,573
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 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 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.
The parties agree that the differences between the claimed method encompassed by the
appealed claims and Gustafson is that the method of the reference encapsulates an
electroluminescent light (EL) strip instead of a light emitting diode (LED) light strip. The
examiner relies on Meggs and Gross to support the position that one of ordinary skill in this art
would have substituted the LED strip for the EL strip in order to take advantage of the different
properties of the LED strip. As pointed out by appellants, “[a] main feature of Meggs is the
presence of the internal void within the emergency light strip to form an internal surface. See col.
4, lines 36-40” (brief, page 7). We find that Meggs would have disclosed at col. 4, lines 22-43,
in connection with Meggs FIG. 2, that the voids to which appellants refer have “prismatic
surface 30 [which] comprises two planar facets forming side corner edges and a central apex
point that extend the entire length of the housing member 4,” the reference further referring to
other such embodiments in FIGs. 4-7 (e.g., col. 5, lines 22-46). We further find that although
Meggs discloses that “[t]he preferred embodiment . . . utilizes an extruded lightweight flexible
transparent plastic resin for the housing member which is extruded to provide internal and
exterior surfaces for reflection and refraction of the generated light” (col. 2, lines 16-20), the
reference does not teach how such extrusion with the voids would be accomplished.
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