Appeal No. 2005-1105
Application 10/314,857
and cases cited therein (a reference anticipates the claimed method if the step that is not
disclosed therein “is within the knowledge of the skilled artisan.”); In re Preda, 401 F.2d 825,
826, 159 USPQ 342, 344 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is
proper to take into account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw therefrom.”).
We find that as a matter of fact, Benoit would have taught one skilled in this art the step
of “submerging a portion [of the substrate] having a temperature-sensitive film deposited
thereon” into the heated liquid, wherein “the heated liquid must be chemically inert with respect
to the temperature-sensitive film deposited on the substrate and the optional barrier coating
material” (col. 3, ll. 1-5 and 62-65, and col. 4, ll. 13-19 and 46-52). We find no disclosure in
Benoit which provides either the teachings or inferences that, as a matter of fact, would have
placed one skilled in this art in possession of the claimed invention, and the examiner has not
established on this record that the knowledge of one skilled in the art of heating substrates would
have led this person to the claimed invention upon reading the disclosure of the reference. Thus,
the examiner has not established that Benoit provides a description of the claimed invention to
one skilled in the art within the meaning of § 102(b).
Indeed, the examiner’s contention that the teachings of Benoit would have led one of
ordinary skill in the art to immediately place the substrate in the heated liquid so that the
“temperature sensitive film would not come in contact with the heating liquid as it is coated on
the substrate” (answer, page 7; see also page 8) is, on this record, an issue of obviousness under
§ 103(a) considered with respect to the second ground of rejection. However, in order to make
out a prima facie case of obviousness within the meaning of this statutory provision, the
examiner must provide a factual foundation establishing that some objective teaching, suggestion
or motivation in the applied prior art taken as a whole and/or knowledge generally available to
one of ordinary skill in this art would have led that person to the claimed invention as a whole,
including each and every limitation of the claims arranged as required by the claims, without
recourse to the teachings in appellant’s disclosure. See generally, In re Rouffet, 149 F.3d 1350,
1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics,
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Fritch, 972 F.2d
1260, 1265-66, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992); In re Oetiker, 977 F.2d 1443,
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