Appeal No. 94-2080
Application 07/982,068
as the plane making a 45 degree angle with a pair of side walls
of the rectangular recess. That is inappropriate, since the
claims recite the (01ù) plane and not the (110) plane.
In any event we further agree with the appellants that
Imaizumi’s subject matter is too remote from that of Wickstrom’s
invention to have a meaningful significance. The rectangular
recess formed in Imaizumi is intended to be filled in to form an
area of extra thickness, and the objective in Imaizumi is to form
an epitaxial layer with a very even top surface but different
thicknesses in different parts thereof. It is unclear and has
not been well explained by the examiner why it would have been
obvious to one with ordinary skill in the art to use Imaizumi's
teachings on the finger-like mesas of Wickstrom.
The initial burden is on the examiner to establish a prima
facie basis to reject the claims. 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
examiner must provide an adequate factual basis to support an
obviousness conclusion. In re Warner, 379 F.2d 1011, 1016, 154
USPQ 173, 178 (CCPA 1967). Here, the examiner has failed to
present a reasonable explanation as to why the evidence
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