Appeal No. 2006-1628
Application No. 09/840,082
irrelevant when the feature is nevertheless inherent to the prior art structure as
noted previously. See Toro, 355 F.3d at 1321, 69 USPQ2d at 1590.
Although appellant argues that Murade suggests dispensing with the light-
shielding member for metal capacitor electrodes [brief, page 11], we note this
suggestion pertains to embodiments other than the first embodiment discussed
above. In particular, the passages noted by appellants pertain to the second and
fourth embodiments -- not to the first embodiment relied upon by the examiner
and discussed above [see Murade, col. 14, line 63 - col. 15, line 5; col. 16, line
33 - col. 17, line 38].
Even though we find Murade anticipatory for the reasons noted above,
obviousness rejections can nevertheless be based on references that happen to
anticipate the claimed subject matter. In re Meyer, 599 F.2d 1026, 1031, 202
USPQ 175, 179 (CCPA 1979). Furthermore, in affirming a multiple-reference
rejection under 35 U.S.C. § 103, the Board may rely on less than the total
number of references relied on by the examiner. In re Bush, 296 F.2d 491, 496,
131 USPQ 263, 266- 67 (CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2, 150
USPQ 441, 444 n.2 (CCPA 1966). In short, the teachings of the admitted prior
art relied upon by the examiner in establishing a prima facie case of obviousness
are merely cumulative to the teachings of Murade. And, as we noted previously,
Murade expressly and implicitly teaches all claimed limitations. Accordingly, we
will sustain the examiner's obviousness rejection of independent claims 1, 5, 9,
11, 15, and 19 solely on the disclosure of Murade. Since appellants have not
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