Appeal No. 2006-1756
Application 10/087,742
6. A lead-free solder according to claim 1 containing only one member of said group.
The references relied on by the examiner are:
Carey, II et al. (Carey) 6,080,497 Jun.
27, 2000
Rikiya1 2000-190090 Jul.
11, 2000
(Japanese Patent Publication)
The examiner has rejected appealed claims 1 through 6 under 35 U.S.C. § 103(a) as being
unpatentable over Rikiya or Carey (answer, pages 3-6).
Appellants argue the claims generally and group claims 2 and 3 and claims 5 and 6 (brief,
e.g., pages 4, 6 and 8). Thus, we decide this appeal based on appealed claims 1, 2 and 6 as
representative of the ground of rejection and appellants’ groupings of claims. 37 CFR
§ 41.37(c)(1)(vii) (2005).
We affirm.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the answer2 and to the brief and reply brief for a complete exposition thereof.
Opinion
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the supported position advanced by the examiner that, prima facie, the claimed
lead-free solder encompassed by appealed claims 1, 2 and 6 would have been obvious over the
teachings of either Rikiya or Carey to one of ordinary skill in this art at the time the claimed
invention was made. Accordingly, since a prima facie case of obviousness has been established
by the examiner, we again evaluate all of the evidence of obviousness and nonobviousness based
on the record as a whole, giving due consideration to the weight of appellants’ arguments in the
brief and reply brief. See generally, In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
1 We refer in our opinion to the translation of Rikiya by the Japan Patent Office. The translation
includes the caveat “has been translated by computer . . . [and] may not reflect the original
precisely.” Neither party argues the applicability of the translation in this respect.
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