Appeal No. 2003-0543
Application 09/292,745
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection
of each of the appealed independent claims 1, 8, 13, 30, and 34,
based on the combination of Berg and Shimazu, Appellant asserts
that the Examiner has failed to establish a prima facie case of
obviousness since all of the claimed limitations are not taught
or suggested by the applied prior art references. In particular,
Appellant contends (Brief, pages 5 and 6; Reply Brief, pages 3
and 4), that neither Berg nor Shimazu has any teaching or
suggestion of using black oxide as a substitute for a solder
resist mask as claimed.
After careful review of the Berg and Shimazu references, in
light of the arguments of record, we are in general agreement
with Appellant’s position as stated in the Briefs. In
particular, in contrast to the Examiner’s position, we find no
teaching or suggestion in Shimazu of the use of black oxide as a
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