Appeal No. 2005-1549
Application No. 10/193,407
described in Enlow. See the appellants’ own claim 12.
Finally, as also correctly found by the examiner (Answer,
page 6), Enlow exemplifies using a conductive coating containing
acrylic polymer and a pigment. See column 21, Example 12. In
other words, Enlow teaches employing a layer of the claimed
acrylic color as required by claim 21.
Thus, on this record, we concur with the examiner that Enlow
anticipates the subject matter defined by claims 11, 12, 14, 18
and 21 within the meaning of 35 U.S.C. § 102(b).
Under Section 103(a), the obviousness of an invention cannot
be established by combining the teachings of the prior art absent
some teaching, suggestion or incentive supporting the
combination. ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d
1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). This does not
mean that the cited prior art must specifically suggest making
the combination. B.F. Goodrich Co. v. Aircraft Braking Sys.
Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996);
In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed.
Cir. 1988). Rather, the test for obviousness is what the
combined teachings of the prior art reference would have
suggested to those of ordinary skill in the art. In re Young,
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007