Ex parte GAO et al. - Page 6




          Appeal No. 96-1353                                                          
          Application 07/696,973                                                      


          bonding other components to the substrate.  This is accomplished            
          by placing molten metal in a capillary tube, from the nozzle of             
          which it is deposited as the tube is moved into successive                  
          positions or along a path.                                                  
               In our opinion, deficiencies exist in the examiner’s                   
          rejection with regard to the suggestion to combine.  Jasper uses            
          plasma spraying because it “quickly heats a material to thousands           
          of degrees and instantly deposits the material on a surface where           
          it resolidifies” (column 6, lines 41 through 43) and becomes                
          fused to the substrate.  From our perspective, one of ordinary              
          skill in the art would have appreciated that the Jasper invention           
          thus requires that the superconductor material be a finished                
          product when it is sprayed onto the substrate, that is, that it             
          has been oxidized prior to spraying.  This being the case, it is            
          our view that motivation therefore would not have been present to           
          modify the Jasper process by spraying an unoxidized                         
          superconductor material upon the substrate, and then oxidize it             
          later.  Not only would this add another step to the Jasper                  
          process, but there is no evidence to support a conclusion that              
          the unoxidized superconductor material would perform in the                 
          manner required by the Jasper invention upon being deposited, or            
          after a subsequent oxidation step.  This undermines the                     

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