Appeal No. 2002-2083
Application No. 09/430,642
findings must extend to all material facts and must be documented on the record, lest
the ‘haze of so-called expertise’ acquire insulation from accountability." In re Lee, 277
F.3d 1338, 1345, 61 USPQ2d 1430, 1435 (Fed. Cir. 2002). Here, we find the
Examiner's arguments to be supported merely by the Examiner's own expertise instead
of the evidence of record and the teachings of prior art which are required in order to
establish a prima facie case of obviousness.
With respect to dependent claim 10, the examiner maintains that it would have
been obvious to one of ordinary skill in the art at the time of the invention to substitute
the well-known copper clad molybdenum in place of the bottom conductive material.
(See brief at page 4.) It is our view, that the examiner has provided no evidence to
support the examiner’s proposed modification of the teachings of Piloto. In order for us
to sustain the Examiner's rejection under 35 U.S.C. § 103, we would need to resort to
speculation or unfounded assumptions or rationales to supply deficiencies in the factual
basis of the rejection before us. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968), rehearing denied, 390 U.S.
1000 (1968). Therefore, we will not sustain the examiner rejection of dependent claim
10 under 35 U.S.C. § 103.
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