Appeal No. 2002-2083
Application No. 09/430,642
Background of the Invention at page 2 states that “bonding glass reduces the shrinkage
of the green tape” which appears to be a recognition in the prior art that the adhesion
rather than the substrate alone solves the shrinkage problem.
We are not persuaded by appellants’ arguments that the Section 102 rejection of
independent claim 9 on appeal is in error.
We thus sustain the rejection of independent claim 9 under 35 U.S.C. § 102 as
being anticipated by Piloto. Since the examiner has established a prima facie case of
anticipation, and appellants have not adequately rebutted this prima facie case of
anticipation, we will sustain the examiner’s rejection of independent claim 9 and its
dependent claims 6 and 8.
35 U.S.C. § 103
In determining novelty, the first inquiry must be into exactly what the claims
define. In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA 1970). Similarly,
a Section 103 analysis begins with a key legal question -- what is the invention claimed?
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597
(Fed. Cir. 1987).
"Deficiencies of the cited references cannot be remedied by the Board's general
conclusions about what is ‘basic knowledge' or ‘common sense.’” In re Zurko, 258 F.3d
1379, 1385, 59 USPQ2d 1693, 1697(Fed. Cir. 2001). Furthermore, "the Board's
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