Appeal No. 94-0105
Application 07/854,124
Appellant traverses this rejection on several grounds,
Paper No. 12 at pages 12 through 14, urging, inter alia, that
there is no motivation in Gao to substitute N-YBCO for PBCO;
and that the prior art did not regard PBCO and N-YBCO as
equivalents.
To establish a prima facie case of obviousness, the
examiner must demonstrate that one of ordinary skill in the
art would have found both a suggestion to perform the here
claimed method, and a reasonable expectation of successfully
doing so, in the prior art. In re Vaeck, 947 F.2d 488, 493,
20 USPQ2d 1438, 1442 (Fed. Cir. 1991). Moreover, the examiner
bears the initial burden of supplying the factual basis for
his position. In re Warner,
379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968). Although the examiner may take
official notice of technical facts outside of the record to
fill the gaps that might exist in the evidentiary showing to
satisfy his burden, such asserted technical facts must be
“capable of such instant and unquestionable demonstration as
to defy dispute.”
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