Appeal No. 2005-2558
Application No. 10/408,149
Appellants first argue that Schar teaches away from the use
of leads, and refers to column 2, lines 34-35, wherein it is
disclosed the “the method ought to be lead-free and no-clean”.
Appellants also refer to column 5, lines 37-42 of Schar in this
regard. Brief, page 5. Appellants also point out that while the
examiner relies upon Bearinger for teaching that it is well known
in the art and conventional to utilize leads, Schar teaches away
from such use. Brief, pages 5-6. Appellants conclude that
“[t]hus, modifying Schar by adding leads as allegedly taught by
Bearinger would destroy Schar’s invention”. Brief, page 6.
We are not convinced by such argument for the following
reasons.
Firstly, while Schar teaches that the method “ought to be
lead-free”, we disagree with appellants that such a teaching
would have dissuaded one of ordinary skill in the art from using
leads in making an electronic component. In this context, we
consider the case of In re Gurley, 27 F.3d 551, 553, 31
U.S.P.Q.2d 1130, 1132 (Fed. Cir. 1994). The Court in In re
Gurley considered a “teaching away” as representing one of
several factors in ultimately affirming the board’s decision on
obviousness. Gurley claimed an epoxy-based printed circuit board
exhibiting bendable and shape retaining qualities. The board
sustained the examiner’s section 103 rejection of Gurley’s claims
over prior art that disclosed material for forming circuit boards
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