Appeal No. 2005-1105
Application 10/314,857
§ 103(a) as being unpatentable over Benoit in view of Bolandi et al. (Bolandi) (answer, page 5).2
Rather than reiterate the respective positions advanced by the examiner and appellant, we
refer to the answer and to the brief for a complete exposition thereof.
We agree with appellant’s position that the examiner has failed to make out a prima facie
case with respect to both grounds of rejection for the reasons pointed out by appellant in the brief
and reply brief, adding the following for emphasis.
We first interpret representative independent claims 1 and 21 by giving the terms thereof
the broadest reasonable interpretation in light of the written description in appellant’s
specification, including the drawings, as it would be interpreted by one of ordinary skill in this
art, without reading into these claims any limitation or particular embodiment disclosed in the
specification. See In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir.
1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). We find that
the plain language of the claims specifies in pertinent part that only the surface of the substrate
which does not have a film disposed thereon is exposed to the liquid bath.
In order for Benoit to anticipate the appealed claims, the examiner must establish as a
matter of fact that, prima facie, the reference identically describes each and every element of the
claimed method, arranged as required by the appealed claims, either expressly or under the
principles of inherency, in a manner sufficient to have placed a person of ordinary skill in the art
in possession thereof within the meaning of § 102(b). See generally, In re Schreiber, 128 F.3d
1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997); Diversitech Corp. v. Century Steps, Inc.,
850 F.2d 675, 677-78, 7 USPQ 1315, 1317 (Fed. Cir. 1988); Lindemann Maschinenfabrik
GMBH v. American Hoist and Derrick, 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir.
1984). Whether the teachings and inferences that one skilled in this art would have found in the
disclosure of an applied reference would have placed this person in possession of the claimed
invention, taking into account this person’s own knowledge of the particular art, is a question of
fact. See generally, In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701 (Fed. Cir. 1995),
2 The appealed claims appear in the appendix to the brief. Claim 10 is also of record and has
been objected to by the examiner as being allowed in substance but dependent on a rejected base
claim (answer, page 10).
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