Appeal No. 2005-0381 Page 15
Application No. 09/841,380
applicant.” In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir. 1994). In other
words, the reference must lead one of ordinary skill in the art to the conclusion that the
process will not work. See Baxter Int’l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1328,
47 USPQ2d 1225, 1230 (Fed. Cir. 1998). There is no such teaching in Booth. Instead, Booth
indicates that both belt and multiple roll transfer surfaces were known in the art. Booth also
provides reasons for their use, e.g., belts are particularly well adapted for porous material coating
(Booth, p. 38).4 But more importantly, Hess provides an express suggestion of using a transfer
roll in the Hess process (Hess, col. 6, ll. 42-47). Given the express suggestion, one of ordinary
skill in the art would have looked to conventional transfer coating processes for use in the Hess
system and Booth indicates that belts and multiple transfer rolls were among the known systems.
We conclude that the Examiner has established a prima facie case of obviousness with
respect to the subject matter of claims 36, 42, and 53 which has not been sufficiently rebutted by
Appellants.
Obviousness of Claims 38-41
Claims 38-41 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hess
and Nakajima and further in view of Neidich. Claims 38-41 stand or fall together (Brief, p. 11).
We select claim 38 to resolve the issues on appeal. Claim 38 is dependent on claim 33 and
further requires that the electrostatic spray head produce a line of charged droplets. As we
4We note that U.S. Patent 4,569,864 issued to McIntyre, a patent discussed in Appellants specification,
provides further evidence that the use of multiple transfer rolls was well known in the art.
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