Appeal No. 2004-1412
Application 09/818,686
person to the claimed invention as a whole, including each and every limitation of the claims
arranged as required by the claims, without recourse to the teachings in appellant’s disclosure.
See generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998);
Pro-Mold and Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626,
1629-30 (Fed. Cir. 1996); In re Fritch, 972 F.2d 1260, 1265-66, 23 USPQ2d 1780, 1783-84
(Fed. Cir. 1992); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992);
In re Laskowski, 871 F.2d 115, 10 USPQ2d 1397 (Fed. Cir. 1989); In re Fine, 837 F.2d 1071,
1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988). The requirement for objective factual
underpinnings for a rejection under § 103(a) extends to the determination of whether the
references can be combined. See In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34
(Fed. Cir. 2002), and cases cited therein.
Upon carefully considering the teachings of Kamioka as set forth in the translation and
the examiner’s position with respect thereto (answer, pages 3 and 4), on this record, we agree
with appellant’s argument that element 12 of Kamioka Fig. 3, which illustrates the second
disclosed embodiment, is an electrical “insulating sheet” (brief, page 8), for indeed, the reference
discloses “insulating sheet 12 of a silicon gum . . . sandwiched between the print board 5 and the
heat generating component 8, and between the print board 5 and the frame 3,” and “[t]hus, the
electrical insulation between the heat generating component 8 and the frame 3 can be made
perfect, and the presence of air is excluded to obtain better contact conditions” (page 6-7).
We contrast this disclosure with the disclosure with respect to Kamioka Fig. 1, which
illustrates the first disclosed embodiment, and that does not have a numeral 12. Instead,
Kamioka discloses with respect to the first embodiment, that “heat generated from the heat
generating component 8 is transferred to the metallic frame 3 through the coating 7 on the inner
surface of a number of the throughholes 6 . . . [b]y filling the throughholes 6 with silicon grease,
solder, or the like,” and “if silicon grease or the like is applied between the print board 5 and the
heat generating component 8, and between the print board 5 and the frame 3, there is no presence
of an air layer, and thereby heat transferability is improved” (page 6).
presented for review in paragraph (c)(6)" ) (emphasis supplied) (see brief, pages 3-5; answer,
pages 2-3).
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