Appeal 2006-1994
Application 10/253,705
Corp., 320 F.3d 1339, 1346, 65 USPQ2d 1961, 1965 (Fed. Cir. 2003),
Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997),
In re Otto, 312 F.2d. 937, 938, 136 USPQ 458, 459 (CCPA 1963).
Moreover, we note that Appellants claim and disclose that plastic may
be used as the substrate material (Claim 6 & Specification 4, line 4).
Similarly, Sedlmeyr discloses that the substrate may be plastic (Sedlmeyr,
col. 5, line 41). Since the same substrate material (i.e., plastic) is used by
Appellants and Sedlmeyr and Appellants’ claimed process and Sedlmeyr’s
process are indistinguishable, it is reasonable to expect that Sedlmeyr’s
coating and drying process would be capable of successfully manufacturing
coated, plastic substrates for use in a lamp environment. In re O’Farrell,
853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988).
Appellants’ arguments regarding the Examiner’s application of the
holding in In re Aller are not persuasive. In view of the circumstances
presented in this appeal, we need not rely on the Aller holding. Specifically,
Appellants’ claimed wavelength range of 0.7 to 1.5 µm encompasses
Sedlmeyr’s disclosed NIR wavelength range of 0.7 to 1.2 µm. Such a
substantial overlap (i.e., encompassing) of the entire prior art wavelength
range by the claimed range indicates a prima facie case of obviousness
exists. See, In re Peterson, 315 F.3d 1325, 1329, 65 USPQ2d 1379, 1382
(Fed. Cir. 2003), In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA
1976); Cf., Autofina v. Great Lakes Chem. Corp., 441 F.3d 991, 998,
78 USPQ2d 1417, 1423 (Fed. Cir. 2006).
We are not convinced by Appellants’ hindsight arguments. The
Examiner has applied the teachings of the prior art rather than hindsight in
formulating his rejections. For example, the Examiner uses Sedlmeyr’s
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