Appeal No. 2006-0440
Application No. 10/291,933
obviousness by attacking references individually where, as here,
the rejections are based on combinations of references.”).
The appellants argue that the examiner’s restriction
requirement, which divided apparatus claims from method claims,
somehow precludes the examiner’s rejection. (Substitute appeal
brief at 4-5.) This argument is utterly without merit. Both
references disclose a method of coating a substrate as well as
an apparatus to carry out that method. Thus, the appellants’
contention that “disclosure of an apparatus does not render a
process obvious,” even if accepted as correct, is irrelevant.
The appellants urge that Zimmer is not concerned with the
problem (entrapment of air bubbles) addressed in the present
specification. (Substitute appeal brief at 5-6.) We note,
however, that Grimm addresses this problem and states that the
method described therein solves this problem. (Column 2, lines
28-31.) Moreover, the examiner is again correct in pointing out
(answer at 8) that the motivation to combine the prior art
references need not be identical to that of the applicants in
order to establish obviousness under 35 U.S.C. § 103(a). In re
Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir.
1996); In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901
(Fed. Cir. 1990)(en banc).
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