Appeal 2006-2523
Application 10/206,496
the formation of a gel in a sol-gel solution, and not to the physical state of
any intermediate formed on the surface of the suspended substrate particles
during formation of the metal oxide film. Thus, we agree with the
Examiner’s position (Answer 4:3-5). We point out with respect to
Appellants’ position that “[i]t is the applicants’ burden to precisely define
the invention, not the PTO’s. See 35 U.S.C. § 112 ¶ 2 [statute omitted].”
Morris, 127 F.3d at 1055-56, 44 USPQ2d at 1029.
We have carefully reviewed the record on this appeal and based
thereon find ourselves in agreement with the supported position advanced by
the Examiner that, prima facie, the claimed method for the polymerization of
metallic precursors in solution to form contiguous metal oxides films on
substrate particles encompassed by appealed claims 1, 2, 6, 7, 16, and 19
would have been obvious over the combined teachings of the prior art
admitted in the Background of the Invention and Adachi to one of ordinary
skill in this art at the time the claimed invention was made. Accordingly,
since a prima facie case of obviousness has been established by the
Examiner, we again evaluate all of the evidence of obviousness and
nonobviousness based on the record as a whole, giving due consideration to
the weight of Appellants’ arguments in the Brief and Reply Brief. See
generally, In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed.
Cir. 1984).
The principal issue in this appeal is whether one of ordinary skill in
this art armed with the knowledge of methods for the polymerization of
metallic precursors in solution to form dense contiguous metal oxide films
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