Appeal No. 2003-0543
Application 09/292,745
evidence. The court has also recently expanded their reasoning
on this topic in In re Thrift, 298 F.3d 1357, 1363, 63 USPQ2d
2002, 2008 (Fed. Cir. 2002).
In our view, contrary to the Examiner’s assertions in
support of the proposed combination, the disclosure of Shimazu
lacks any teaching of the use of black oxide, let alone any
suggestion of the use of black oxide as a substitute for the
solder resist mask in Berg. We also find nothing in the
disclosure of the Ma reference, which provides a general teaching
of the use of a metal oxide as a solder mask, which would suggest
the use of a specific oxide, i.e., black oxide, as claimed.
Since all of the claim limitations are not taught or
suggested by the applied prior art, it is our opinion that the
Examiner has not established a prima facie case of obviousness
with respect to the claims on appeal. Accordingly, we do not
sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
independent claims 1, 8, 13, 30, and 34, nor of claims 2, 3, 6,
7
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