Appeal 2006-3124
Application 10/251,179
elements, i.e., a top plate and a separate ring-like structure. See Br. 11.
Similarly, the Examiner has not explained the underlying basis for his
conclusion that “the disclosed adjustment apparatus could be easily
configured to lift a ring and is therefore an obvious variation and art
recognized equivalent." (Answer 8). See Br. 11.
To establish prima facie obviousness, the Examiner must also provide
reasons why one of ordinary skill in the art would have possessed the
knowledge and motivation to make the claimed invention. See In re Kahn,
441 F.3d at 988, 78 USPQ2d at 1336 . In our view, the Examiner’s assertion
that “it would be obvious to one of ordinary skill in the art at the time of
invention to realize that a part without the continuous top . . . would be usable
. . .” establishes, at best, a “general incentive” to use a ring in place of a solid
top. While a "general incentive" may make an approach "obvious to try" it
does not make the invention obvious. In re Deuel, 51 F.3d 1552, 1559, 34
USPQ2d 1210, 1216 (Fed. Cir. 1995). See In re O'Farrell, 853 F.2d 894, 903,
7 USPQ2d 1673, 1680 (Fed. Cir. 1988) (“Obvious to try" is not the standard
of obviousness under 35 U.S.C. § 103.).
The rejection of claims 8, 9 and 18-20 as unpatentable over Tanaka is
reversed.
Claim 14 is rejected under 35 U.S.C. § 103(a) over Tanaka in view of
Maeda. Claim 14 depends from claim 8. The Examiner’s reliance on Maeda is
limited to its disclosure of a focus ring made of quartz. Accordingly, the
rejection of claim 14 is reversed for the same reasons discussed in connection
with claim 8.
Claims 1-7 and 13-17 are rejected under 35 U.S.C. § 103(a) over AAPA
in view of Koike and Tanaka. Claims 1-7 and 15-17 are rejected under
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