Appeal No. 2005-1105
Application 10/314,857
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Laskowski, 871 F.2d 115, 10 USPQ2d 1397
(Fed. Cir. 1989); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir.
1988).
Here, the examiner’s contention that one of ordinary skill in the art would have
immediately reversed the substrate with respect to the heated liquid is clearly contrary to the
teachings of Benoit with respect to heating the temperature-sensitive film on the substrate by
immersing the film and at least a portion of the substrate in the heated liquid. We are of the
opinion that the modification of the method of Benoit as proposed by the examiner would require
wholesale revision of the method of this reference, rendering the same inoperable for the
intended purpose of heating the film on the substrate in the disclosed manner, which includes the
heated liquid filing any gap between the film and the substrate considered necessary by Benoit
(col. 4, ll. 13-19). Thus, on this record, we conclude that the examiner has failed to establish a
prima facie case of obviousness by pointing to a teaching, suggestion or motivation to heat the
film by immersing the non-film side of the substrate in the heated liquid, even though the method
of Benoit can be so modified. The disclosure in the reference that the entire substrate need not
be submerged does not provide the same. See generally, In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984)..
The examiner’s decision is reversed.
Reversed
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