Appeal No. 2003-1983
Application No. 09/704,077
DISCUSSION
An invention is unpatentable under 35 U.S.C. § 103 if the
claimed invention as a whole would have been obvious to a person
of ordinary skill in the art at the time the invention was made.
In re O’Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673, 1680 (Fed.
Cir. 1988). The initial burden of establishing a prima facie
case of obviousness rests on the examiner. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). For the
reasons set forth in greater detail below, we find that the
examiner has failed to satisfy his burden of showing that the
claimed invention would have been obvious to a person of ordinary
skill in the art at the time of the invention.
The examiner found that Yokoyama teaches the invention as
claimed in claim 9 with the exception that Yokoyama fails to
teach the addition of a second coating (i.e., a topcoat) after
performing laser marking. Examiner’s Answer, page 6. The
examiner maintains that:
it would have been obvious to one of ordinary skill in
the art to deposit a second coating on Yokoyama et al’s
identifying indicia, for standard purpose of decorative
and/or protective coating, especially as col. 1-2
indicate reliability and quality are important, and the
taught heat and chemical resistance do not necessitate
wear resistance or the like, which the ordinary user
of, for examples bar codes, knows to be important for
the lasting integrity of such labels.
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