Appeal 2006-2571
Application 09/759,179
features can be useful in the disclosed processes. In this respect, we
determine one of ordinary skill would interpret the recitation in Whitesides
relied on by the Examiner, “[t]he stamping pattern includes closely-spaced
features . . . defining stamping surface 26” (Whitesides col. 7, ll. 10-18), as
specifically directed to the stamping pattern provided by stamping surfaces
26 on stamp 20. Thus, the word “includes” in context indicates a part of the
stamp as opposed to a class of stamps.2 Indeed, the Examiner states that
Whitesides does “not expressly disclose recesses of different apertures”
(Answer 5). Thus, while there may be “real world applications” that involve
etching non-uniform patterns in a substrate, the Examiner has not established
that one of ordinary skill would have modified Whitesides’ stamps in the
context of the reference process on that basis alone. See, e.g., B.F. Goodrich
Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d
1314, 1318 (Fed. Cir. 1996) (“When obviousness is based on a particular
prior art reference, there must be a showing of a suggestion or motivation to
modify the teachings of that reference. This suggestion or motivation need
not be expressly stated.” (citation omitted)).
The combinations of Whitesides with Biebuyck, Hawkins, and
Maracas as applied also do not support the Examiner’s position. The
Examiner does not explain why one of ordinary skill in this art would have
found in Whitesides’ disclosure a teaching that the microprinting processes
disclosed therein can be practiced with a stamp having non-uniform features
such as the stamp used in the different processes of Biebuyck. Further, one
2 See, e.g., include, The American Heritage Dictionary Of The English
Language 887 (4th ed., Boston, Houghton Mifflin Company, 2000).
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