Appeal No. 2005-0128
Application No. 10/120,158
citing McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576, 1578, 27 USPQ2d
1129, 1131 (Fed. Cir. 1993) .
Further, as pointed out by our reviewing court, we must first determine the scope
of the claim. "[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d
1362,1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Therefore, we look to the
limitations set forth in independent claim 1. Independent claim 1 requires an apparatus
for use as a LED comprising a metal substrate and a fired dielectric coating on the
metal substrate. The examiner maintains that Hochstein teaches all the limitations but
for the use of stainless steel as the metal substrate and the “fired” dielectric. The
examiner maintains that Ellis teaches the use of a stainless steel substrate and the use
of a dielectric substrate is fired to 600-900 ºC and that it would have been obvious to
one of ordinary skill in the art at the time of the invention to use the stainless steel
substrate and fired dielectric as taught by Ellis at columns 3 and 4 in combination with
the teachings of Hochstein. (Answer at pages 3-4.) Appellants argue that two of the
three criteria of a prima facie case of obviousness have not been met by the examiner.
Appellants argue that the examiner has not established a teaching or suggestion to
make the combination nor has the examiner established a reasonable expectation of
success in the prior art. (Brief at page 17.)
Appellants argue that the examiner has not established any teaching or
motivation as to why it would have been obvious to one of ordinary skill in the art at the
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