Appeal No. 2003-0001
Application 09/360,573
Appellants further submit that “Gross does not suggest a method of manufacture of the
emergency light strip, nor does Gross suggest any method, other than the use of a U-shaped
protective translucent plastic cover, to encapsulate the strips of light” (brief, page 6). Indeed, we
find that Gross which would have disclosed an LED light strip covered with “a U-shaped
protective translucent plastic cover 56,” for use in “confined areas,” e.g., embedding the light
strip in carpeting or other covering in a hall way, but does not disclose the method for making the
LED strip or materials of which it is made (cols. 1-3 and FIGs. 1-5).
We must agree with appellants that, on this record, the disclosures of Gustafson, Meggs
and Gross, separately or combined, would not have provided one of ordinary in the art with the
motivation to encapsulate the LED strip of Meggs or Gross by the method of Gustafson. Thus,
we conclude that the examiner has not pointed to some teaching, suggestion or motivation in the
prior art to combine these references. See Lee, supra; Smith Industries medical Systems, Inc. v.
Vital Signs, Inc., 183 F.3d 1347, 1356, 51 USPQ2d 1415, 1420-21 (Fed. Cir. 1999); In re Mayne,
1043 F.3d 1339, 1342, 41 USPQ2d 1451, 1454 (Fed. Cir. 1997); Fritch, 972 F.2d at 1266, 23
USPQ2d at 1783; ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ
929, 933 (Fed. Cir. 1984); In re Keller, 642 F.2d 413, 425-26, 208 USPQ 871, 881-82 (CCPA
1981). Indeed, the fact that a LED strip of Gross could be encapsulated by the method disclosed
by Gustafson does not alone provide the basis for combining the applied prior art. See, e.g., In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992) (“The mere fact that the
prior art may be modified in the manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the desirability of the modification.”).
Accordingly, the examiner has failed to establish a prima facie case of obviousness, and
thus we reverse the ground of rejection.
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