Appeal No. 2005-0381 Page 9
Application No. 09/841,380
those concepts would suggest to one skilled in the art the modification called for by the
claims.”).
The evidence as a whole supports the position of the Examiner. We conclude that the
Examiner established a prima facie case of obviousness with respect to the subject matter of
claim 33 and those claims standing or falling therewith which has not been sufficiently rebutted
by Appellants. We also note that, as we explained above, claim 33 is also anticipated by Hess.
Group III, Claims 37 and 58
To represent Group III, we select claim 37. Claim 37 requires that the transfer surface be
grounded. Roll 216 of Hess is grounded. See the ground symbol in Figure 3 and the discussion
in column 6, lines 12-14. Hess anticipates claim 37. Lack of novelty is the ultimate or epitome
of obviousness. In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982).
Moreover, the evidence supports a conclusion of obviousness. When adopting the
transfer roll embodiment suggested by Hess, it would have been obvious to one of ordinary skill
in the art to ground the transfer roll as the transfer roll would be used in place of the roll 216 to
receive the coating and the necessary electric potential differential would need to be created
between the nozzle and the transfer roll.
We cannot agree with Appellants that no proper combination of Hess and Nakajima
suggests the claim 33 apparatus (Brief, p. 23). In fact, Hess alone suggests the apparatus of
claim 33. The suggestion to combine comes from the prior art, as filtered through the knowledge
of one skilled in the art and as such is adequate for a conclusion of prima facie obviousness. See
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