Appeal No. 2005-0381 Page 12
Application No. 09/841,380
substrate against the conductive transfer device as claimed. No other portion of the rejection is
disputed here.
We conclude that the Examiner has established a prima facie case of obviousness with
respect to claim 43 which has not been sufficiently rebutted by Appellants.
Group VII, Claim 55
Claim 55 recites that the apparatus further comprises the substrate wherein the substrate
is coated without substantial penetration of the coating through the substrate. The Examiner
finds that Hess is capable of coating the substrate as claimed (Answer, p. 5). Appellants argue
that “‘capability’ is not an adequate basis for alleging obviousness and is not sufficient by itself
to establish a prima facie case of obviousness.” (Brief, p. 26).
First, we note that the “substrate” cannot be said to be part of the apparatus, it is an
article worked upon by the apparatus. See In re Rishoi, 197 F.2d 342, 345, 94 USPQ 71, 73
(CCPA 1952)(“[T]here is no patentable combination between a device and the material upon
which it works.”); In re Young, 75 F.2d 996, 998, 25 USPQ 69, 71 (CCPA 1935)(Inclusion of
material worked upon by machine as an element in claim may not lend patentability when the
claim is not otherwise allowable.).
Taking a hard look at claim 55, we determine that the claimed apparatus includes, in
terms of positively recited structural elements, only a circulating conductive transfer surface and
an electrostatic spray head. Where the prior art describes an apparatus having those positively
recited apparatus elements and those structures are capable of functioning as claimed, the claim
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: November 3, 2007