Appeal No. 2006-0859
Application No. 09/778,338
IV. Whether the Rejection of Claims 3 and 4 Under 35 U.S.C. § 103 is
proper?
It is our view, after consideration of the record before us, that the evidence relied
upon and the level of skill in the particular art would have suggested to one of ordinary
skill in the art the invention as set forth in claims 3 and 4. Accordingly, we affirm.
With respect to dependent claim 3, Appellants repeat the argument of claim 1
with respect to the Neumann reference. We again find that argument unpersuasive for
the reasons given above.
Therefore, we will sustain the Examiner’s rejection under 35 U.S.C. § 103.
V. Whether the Rejection of Claim 5 Under 35 U.S.C. § 103 is proper?
It is our view, after consideration of the record before us, that the evidence relied
upon and the level of skill in the particular art would have suggested to one of ordinary
skill in the art the invention as set forth in claim 5. Accordingly, we affirm.
With respect to dependent claim 5, Appellants argue at page 6 of the brief, that
claim 5 is patentable because the feature of claim 5 would not be used in the device of
the Neumann reference. We disagree.
The rejection before us used a combination of references of which the Neumann
reference was used solely to teach the lamination thickness. One cannot show
nonobviousness by attacking references individually where the rejections are based on
combinations of references. See In re Keller, 642 F.2d 413, 426, 208 USPQ 871, 882
(CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir.
1986).
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