Appeal No. 2005-0381 Page 14
Application No. 09/841,380
Appellants (Brief, p. 12), for claims directed to an apparatus, the prior art need only describe an
apparatus with structures capable of functioning as claimed to met the limitations of the claim.
Ludtke, 441 F.2d at 663-64, 169 USPQ at 566-67.
Appellants argue that the structural recitations of the claim are not met (Reply Brief,
p. 12). But the relevant structure, i.e., the spray head and transfer surface, are described by Hess
and Appellants have not convinced us that those structures do not have the capability of
functioning as claimed. That is enough to establish unpatentability in this case. In fact, the
Examiner could have based the rejection on anticipation rather than obviousness.
Obviousness of Claims 36, 42, and 53
Claims 36, 42, and 53 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Hess and Nakajima and further in view of Booth. The claims stand or fall together (Brief, p. 11).
The claims are directed to the structure of the transfer surface. The surface must include a belt
(claim 36) or a plurality of transfer surfaces (claims 42 and 53). The Examiner has applied
Booth as evidence that belts and multiple transfer rolls were known in the art.
According to Appellants, a person having ordinary skill in the art who reviewed Booth
would not combine Hess’ coater or Nakajima’s coater with Booths’ steel casting belt. According
to Appellants, Booth leads away from the modern-day use of steel belt casting (Brief, p. 29). We
cannot agree that Booth “teaches away” to the extent that there is no prima facie case of
obviousness. “In general, a reference will teach away if it suggests that the line of development
flowing from the reference's disclosure is unlikely to be productive of the result sought by the
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