Appeal 2007-2236
Application 10/991,738
1 lanthanum, we have not been shown that the other rare earth metals are in
2 fact routinely used in making semiconductors and therefore the likely
3 success of the use of rare earth metals beyond yttrium and lanthanum is
4 questionable—at least on this record. Also, on this record we have
5 considerable pause that one skilled in the art would not have to engage in
6 considerable research to find articles having Rupich's properties made from
7 anything other than the rare earth yttrium.
8 A third factor is that Rupich tells us, or at least wants us to believe
9 with respect to the § 103 rejections, that the subject matter of the critical
10 current density is "unpredictable."
11 At this point, we do not foreclose a possibility that Rupich can address
12 our concerns during further prosecution before the Examiner. Moreover, we
13 have considerable confidence that the Examiner is in a position to
14 appropriately evaluate any additional evidence or argument which Rupich
15 may present.
16
17 (3)
18 Obviousness
19 As explained above, we do not reach the Examiner's obviousness
20 rejections.
21 We will call the following hopefully helpful guidance to the attention
22 of Rupich and the Examiner so that if a definite claim is presented, an
23 obviousness analysis can be made which takes into account any critical
24 current density limitation—such as that in claim 89, which presumably
25 would appear in any re-written claim.
16
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