Appeal No. 2004-0642
Application No. 09/635,098
Accordingly, the examiner’s statement that it would have been
obvious to combine the references “for the purpose of enhancing the
inductance of the inductor” (Paper No. 14, page 3) has been refuted
by this disclosure of Sasaki (see the Brief, pages 6-7). A
reference which “teaches away” from the claimed subject matter is
strong evidence of non-obviousness. See In re Gurley, 27 F.3d 551,
553, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994); and In re Hedges, 783
F.2d 1038, 1041, 228 USPQ 685, 687 (Fed. Cir. 1986). As correctly
pointed out by appellants (Reply Brief, unnumbered page 2), the
examiner does not specifically address this argument (see the
Answer, argument [2] on page 3, with the response on page 4).
Additionally, the examiner fails to identify any other reason or
suggestion for the proposed combination of references, only stating
that both references are directed to penetrating conductors used
in chip type inductors (Answer, page 4). It is incumbent upon the
examiner to identify a clear and particular reason or suggestion
to combine the references as proposed in the rejection, and not
to rely on general statements. See In re Dembiczak, 175 F.3d 994,
999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999).
For the foregoing reasons and those stated in the Brief and
Reply Brief, we determine that the examiner has failed to establish
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