Appeal No. 1996-2769
Application 08/270,089
luminescent labels in biology.” Id., p. 6. The examiner points out that the method of
making the particles disclosed by Matijevic is substantially the same as steps (a) - (c) of
the claimed method. However, the examiner recognizes that there are two deficiencies in
the Matijevic patent, viz., it (i) only teaches a method of making particles comprising
single rare earth oxides, and (ii) fails to teach the conversion of the oxides to oxysulfides.
The examiner does not offer any reason as to why it would have been obvious to one of
ordinary skill in the art to convert the single earth oxides disclosed by Matijevic to the
corresponding oxysulfide, but she attempts to account for the first deficiency by urging that
the patent “suggests to one of ordinary skill in the art to produce spherical colloidal oxides
of other known activated rare earth oxides, such as (Y Yb Er ) O discussed by
0.86 0.08 0.06 2 3
appellant in the specification, by the taught process” [emphasis added]. Id.
This last statement underscores our principal reason for finding that the examiner
has failed to establish a prima facie case of obviousness. We direct the examiner’s
attention to the holding of the court in Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996)(citation omitted):
It is well-established that before a conclusion of obviousness
may be made based on a combination of references, there
must have been a reason, suggestion, or motivation to lead an
inventor to combine those references.
Here, the only place where we find a teaching of a method of making spherical
phosphor particles of less than one micron in size comprising a rare earth phosphor
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