Appeal No. 2006-1421
Application No. 10/434,397
continuity of the coating can be readily controlled as
desired by Lefebvre . . . , col. 5, lines 31-40 and
taught by Mitchnick [replacement Answer, page 4].
In support of their nonobviousness position, the appellants
argue that "[o]ne of ordinary skill in the art would not use the
materials taught by Mitchnick . . . in the non-functional
comparative sample environment of Lefebvre [i.e., Sample B]"
(replacement Brief, page 17). This argument is unconvincing.
Contrary to the premise of the appellants' argument, it is
inappropriate to characterize Sample B of Lefebvre as
"non-functional." Furthermore, as expressed in the examiner's
afore-quoted obviousness conclusion, an artisan would have been
motivated to use the silicon-based coating material of Mitchnick
because the "thickness and continuity of the [Mitchnick] coating
can be readily controlled as desired by Lefebvre . . . and
taught by Mitchnick" (replacement Answer, page 4).
In light of the foregoing, we again determine that the
examiner has established a prima facie case of unpatentability
which the appellants have failed to successfully rebut with
argument or evidence of patentability.3 See Oetiker, 977 F.2d at
3 As a matter of interest, we observe that the earlier mentioned Declaration,
which the appellants discussed with respect to the § 102 rejection and which
we declined to consider in footnote 2, has not been discussed at all with
respect to the § 103 rejection under review.
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