Appeal 2006-2571
Application 09/759,179
stamp” (id.). Appellant contends “none of the replica molding methods
shown in [Xia] Fig. 4.1 show the use of a second body, as claimed” (Br. 6).
The Examiner responds “[s]ince replica could be made from first body to
second body or even further the method of making replica reads on the
claim” (Answer 9). Appellant replies the Examiner has not identified
correspondence between evidence in the applied references and the
limitations of claim 7 and thus, relies on hindsight (Reply Br. 6-7).
The plain language of dependent claim 7 specifies the patterned
surface of the first body is replicated in a second body.
Xia shows in the procedure in steps “A) REM” illustrated in FIG. 17
at page 562, the same three steps illustrated in Whitesides FIGs. 9d-f.
We agree with Appellant that the applied references do not show the
step specified in claim 7. Indeed, there is no teaching in either Whitesides or
Xia which would have suggested to one of ordinary skill in this art that the
stamp or first body replicating the pattern of the mold would in turn be used
as a mold to replicate another stamp or second body. On this record, we
further agree with Appellant the Examiner employed hindsight in reaching
the conclusion of obviousness. See, e.g., Rouffet, 149 F.3d at 1358, 47
USPQ2d at 1458.
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 claim 7 under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed-in-part.
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