Appeal No. 2003-0014 Page 3
Application No. 08/858,022
The appellant’s invention is directed to the manufacture of flexible printed wiring,
which has been accomplished in the prior art by removably coupling the substrate upon
which the conductor will be deposited to a carrier during manufacture. According to the
appellant, problems present in the prior art techniques are alleviated by his inventive
method. Representative claim 66 sets for the invention in the following manner:
66. A method of processing a flexible substrate comprising:
providing a processing carrier having a silicone-comprising
surface;
providing a flexible substrate having a pair of opposing
surfaces, the opposing surfaces being a first surface and a
second surface;
cleaning the first surface of the flexible substrate;
adhering the first surface of the flexible substrate to the
silicone-comprising surface of the processing carrier after
the cleaning; and
processing the second surface of the flexible substrate while
the first surface of the flexible substrate is adhered with the
silicone-comprising surface of the processing carrier.
The standing rejection is that the subject matter of claims 66-88 would have
been obvious1 to one of ordinary skill in the art under 35 U.S.C. § 103 in view of
1The test for obviousness is what the combined teachings of the prior art would have suggested to
one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness, it is incumbent upon the examiner to
provide a reason why one of ordinary skill in the art would have been led to modify a prior art reference or
to combine reference teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972,
973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem from some teaching,
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