Appeal 2006-3358
Application 09/933,349
ranges disclosed in the prior art or when the differences therebetween are so
minor that one skilled in the art would have expected them to have the same
properties. That we presume to be a correct statement of the law.
Appellants proceed to allege that the USPTO has failed to “carry the burden
of establishing” either of the alternative requirements. We disagree with the
implicit assumption, however, that Appellants have provided a
comprehensive list of ways a prima facie case of obviousness may be
established.
The § 103 rejection is based on what Hu would have taught one
skilled in the art. What a reference teaches is a question of fact. In re Baird,
16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994); In re Beattie,
974 F.2d 1309, 1311, 24 USPQ2d 1040, 1041 (Fed. Cir. 1992). Even if
Appellants were to show that the claimed invention avoided Appellants’
proffered basis for obviousness, such a showing does not necessarily
demonstrate error in the Examiner’s findings or conclusion.
In remarks that could be responsive to the rejection that has been
applied, Appellants contend that Hu “teaches away” from the claimed
invention. “A reference may be said to teach away when a person of
ordinary skill, upon [examining] the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” Para-Ordnance
Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1090, 37 USPQ2d
1237, 1241 (Fed. Cir. 1995) (quoting In re Gurley, 27 F.3d 551, 553, 31
USPQ2d 1130, 1131 (Fed. Cir. 1994)).
Appellants do not, however, identify anything in Hu that would serve
to warn the artisan against forming indium columns having a height of, for
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