Appeal 2006-2523
Application 10/206,496
on substrate particles in the prior art as described in the Background of the
Invention, would have modified the prior art methods by suspending the
substrate particles in a solution containing ethanol or any other alcohol and
any amount of at least two alcohols having three to seven carbon atoms such
that the boiling point of the solution is any point above the boiling point of
ethanol in the reasonable expectation of obtaining the metal oxide films
(Answer 4:14-16). Contrary to Appellants’ position (see, e.g., Reply Br.
49:19-20 and 24), the admitted prior art in the Background of the Invention
in the specification is the primary prior art knowledge relied on by the
Examiner.5
The admitted prior art methods are described in the Background of the
Invention as using solutions containing any metal precursor, wherein the
solutions “may contain, for example, ethanol [having two carbon atoms] . . .
as the primary solvent” without limitation on the presence of other solvents
as ethanol is used in an exemplary manner. The Examiner relies on Adachi
to evince that in polymerizing titanium alkoxide as the metallic precursor to
form titanium oxide films on substrate particles, the solvent consists mainly
of alcohols having four to ten carbon atoms and can further contain less than
20 volume percent of alcohols having one to three carbon atoms, which
includes ethanol, citing col. 6, ll. 26-50; and that silicon alkoxide precursors
form metal oxide films using a solvent that can contain an alcohol having
5 See In re Nomiya, 509 F.2d 566, 570-71, 571 n.5, 184 USPQ 607, 611,
611 n.4 (CCPA 1975) (appellants’ representations in their application should
be accepted at face value as admissions that Figs. 1 and 2 may be considered
“prior art” under § 103, conceding what is to be considered as prior art in
determining obviousness of their improvement).
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