Appeal 2006-2571
Application 09/759,179
of ordinary skill would not have a different view of Whitesides’ disclosure
simply because of the use of an anisotropic etch therein and in Hawkins, the
latter in fact etching a substrate to form a device which is not used as a
template for molding another article. This person also would not have found
further guidance to modify the stamp of Whitesides, which can have a ridge
or point of approximately 0.100 micron or less, by the disclosure in Maracas
of a feature of less than one micron in a stamp with uniform features. See,
e.g., In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981)(“The test for obviousness is not whether . . . the claimed invention
must be expressly suggested in any one or all of the references. Rather, the
test is what the combined teachings of the references would have suggested
to those of ordinary skill in the art.”).
Accordingly, in the absence of scientific reasoning or evidence
supporting the Examiner’s conclusion of prima facie obviousness, we
reverse the grounds of rejection of claims 1 through 3 and 5 under 35 U.S.C.
§ 103(a). See e.g., In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453,
1458 (Fed. Cir. 1998) (“hindsight” is inferred when the specific
understanding or principal within the knowledge of one of ordinary skill in
the art leading to the modification of the prior art in order to arrive at
appellant’s claimed invention has not been explained).
With respect to independent claim 6 and claims 11, 12, and 14
dependent thereon, and the third and fifth grounds of rejection, the Examiner
contends Whitesides discloses “a method of manufacturing a stamp for use
in a lithographic process (Fig 8a[sic, 9a]-9f Col 14 line 28 to Col 15 line 19)
which includes anisotropic etching of a surface” (Answer 5). The Examiner
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