Appeal No. 1998-0758
Application 08/434,073
The examiner has not provided evidence that one of ordinary
skill in the art would have considered evaporation to always
be suitable as a substitute for sputtering for forming oxide
films of indium, tin or their combination, or would have had a
reason for substituting evaporation for the particular process
used by Preston.
The examiner’s argument that both processes would have
been expected to produce similar results has no support in the
applied prior art with respect to sputtering and evaporation
generally, let alone with respect to Preston’s process wherein
the film color is observed and used for adjusting the oxygen
level in the sputtering chamber. The examiner’s argument is
based upon mere speculation, and such speculation is not
sufficient for establishing a prima facie case of obviousness.
See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968); In re Sporck, 301
F.2d 686, 690, 133 USPQ 360, 364 (CCPA 1962).
For the above reasons, we conclude that the examiner has
not carried the burden of establishing a prima facie case of
obviousness of the appellants’ claimed invention.
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