Appeal No. 95-4115 Page 6
Application No. 07/932,714
Morrison would have suggested the claimed process herein to a
skilled artisan.
While the admitted prior art in the specification (JP-
1236544) does indicate that a method of forming a silicon
dioxide layer via liquid phase epitaxial growth is known, the
examiner has not carried his burden to show how that known
technique would have rendered the specifically claimed process
herein obvious to one of ordinary skill in the art.
To establish a prima facie case of obviousness, an
examiner must explain why the teachings from the prior art
itself would have suggested the claimed subject matter to one
of ordinary skill in the art. See In re Rinehart, 531 F.2d
1048, 1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact that
the prior art could be modified as proposed by the examiner is
not sufficient to establish a prima facie case of obviousness.
See In re Fritsch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783
(Fed. Cir. 1992).
In our view, the motivation relied upon by the examiner
for combining the teachings of the references to arrive at
appellant’s claimed invention herein appears to have come from
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