Gurley, In re, 94-1025
| Decision Date | 15 June 1994 |
| Docket Number | No. 94-1025,94-1025 |
| Citation | 31 USPQ2d 1130,27 F.3d 551 |
| Parties | In re Francis S. GURLEY. |
| Court | U.S. Court of Appeals — Federal Circuit |
Michael A. Cantor, Fishman, Dionne & Cantor, Windsor, CT, submitted, for appellant.
James T. Carmichael, Associate Sol., Arlington, VA, submitted, for appellee. With him on the brief were Fred E. McKelvey, Sol. and Lee E. Barrett, Associate Sol.
Before NEWMAN, PLAGER, and CLEVENGER, Circuit Judges.
Francis S. Gurley appeals the decision of the Board of Patent Appeals and Interferences, 1 affirming the Examiner's rejection of all of the claims of application Serial No. 07/524,373. The Board determined that these claims are unpatentable for obviousness in terms of 35 U.S.C. Sec. 103, in view of Japanese Patent Specification No. 56-76591 (Yamaguchi) and the prior art set forth in Gurley's specification.
We agree that the prior art constituted a prima facie case of obviousness, placing on Mr. Gurley the burden of coming forward with evidence and argument in rebuttal. See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed.Cir.1984). Mr. Gurley did not meet that burden.
Claim 1 of the Gurley patent application is representative, and defines the Gurley invention as follows:
1. A printed circuit material for forming shape retaining multi-planar circuit boards consisting essentially of:
a substrate material made of a nonwoven web impregnated with an epoxy;
said substrate having a thickness of between about 0.010 inch and 0.062 inch;
at least one sheet of electrically conductive material laminated to at least one side of said substrate;
said electrically conductive sheet having a thickness of between 0.0006 inch and about 0.003 inch; and
said laminate of epoxy impregnated nonwoven substrate material and electrically conductive material being capable of being formed and bent into a shape retaining multi-planar shape at room temperature without requiring fastener means to retain said multi-planar shape.
Gurley states that his invention is directed to an epoxy based printed circuit material that is bendable and shape-retaining, wherein the epoxy has a glass transition temperature at or near room temperature. 2 The epoxy is not otherwise described or limited. The Yamaguchi reference describes a printed circuit material for forming circuit boards similar to those of Gurley, comprising a fibrous substrate impregnated with a polyester-imide resin instead of the epoxy resin claimed by Gurley. The nature of the resin is the only significant difference from the prior art circuit material. However, epoxy is mentioned by Yamaguchi as known for this use. According to Yamaguchi, circuit boards having an epoxy-impregnated fibrous substrate have "relatively acceptable dimensional stability" and "some degree of flexibility," but are inferior to circuit boards made with his polyester-imide resins.
Referring to the statement of inferiority in the Yamaguchi reference, Mr. Gurley argues that Yamaguchi "teaches away" from Gurley's invention. A reference may be said to teach away when a person of ordinary skill, upon reading 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. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant. See United States v. Adams, 383 U.S. 39, 52, 86 S.Ct. 708, 714, 15 L.Ed.2d 572, 148 USPQ 479, 484 (1966) (); W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550-51, 220 USPQ 303, 311 (Fed.Cir.1983) (...
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