Appeal 2006-1260
Application 09/956,411
appellant's [sic, Appellants’] claims” (Answer 8). Regarding Hung’s
examples, “[t]he examiner notes that non-preferred embodiments can be
indicative of obviousness . . . and a reference is not limited to working
examples” (id.; emphasis deleted). The Examiner’s position is well taken.
Contrary to the Appellants’ belief, the mere fact that Hung embraces a
number of embodiments which do not fall within the scope of appealed
claim 17 does not forestall an obviousness conclusion with respect to those
embodiments that do fall within the scope of appealed claim 17. Although
the number of combinations in Hung may be extensive, an artisan with
ordinary skill would have considered each of these embodiments as being
obvious and effective in view of Hung’s disclosure. Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir.
1989).
Appellants also argue that “a skilled artisan would understand Hung's
reference to sputtering to be a technique useful in the semiconductor
fabrication portion of Hung’s invention, and not for OLED fabrication. As
noted, Hung . . . specifies deposition by thermal evaporation in all of the
examples relating to OLED fabrication” (Br. para. bridging 6 and 7).
The Examiner responds that “Hung does not expressly lead one to
believe that sputtering is not suitable for forming the cathode [for OLED
fabrication]” (Answer 8). According to the Examiner: “Hung . . . states at
col. 3, lines 11-13 that electrode (13) is formed by conventional means such
as sputtering. Hung . . . further teaches an organic electroluminescent device
is an application of the electrode structure (see col. 2, lines 28-29 and lines
15-23)” (id.).
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