Appeal 2007-3374
Application 10/448,758
matter of a claim would be obvious] need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex, Inc.,
127 S. Ct. 1727, 1740-41, 82 USPQ2d 1385, 1396 (2007) quoting In re
Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336-37 (Fed. Cir. 2006). The
analysis supporting obviousness, however, should be made explicit and
should “identify a reason that would have prompted a person of ordinary
skill in the art to combine the elements as the new invention does.” KSR,
127 S. Ct. at 1741, 82 USPQ2d at 1396.
REJECTION BASED ON MAWSON
As evidence of obviousness of the subject matter defined by claims 7
through 10 under 35 U.S.C. § 103, the Examiner takes the position that the
determination of optimum or workable thicknesses of the first and second
layers taught by Mawson is well within the ambit of one of ordinary skill in
the art (Answer 4-5). However, as indicated supra, Mawson is silent as to
employing a flattening agent in an inner layer that is completely covered by
an outer layer. Nevertheless, the Examiner has not identified any reason
why one of ordinary skill in the art would have prompted to employ a
flattening agent in an inner layer hidden behind an outer layer. Accordingly,
we are constrained to agree with the Appellants that the Examiner has not
established a prima facie case of obviousness within the meaning of
35 U.S.C. § 103(a).
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