Appeal No. 96-1367
Application No. 07/804,501
is not enough for the examiner to simply question, as by way
of a query, whether traditional refrigerants other than helium
may be utilized in the claimed invention. Rather, the
examiner must make a compelling case that one of ordinary
skill in the art would be unable to practice the claimed
invention by using refrigerants other than the one
specifically disclosed in the specification. Inasmuch as the
examiner has not met this burden, we cannot sustain the
rejection under § 112, first paragraph.
There is no dispute that British '958 discloses a gas-
cycle refrigerator of the type claimed, but does not teach the
use of appellants' heat regenerative material. Hence, the
examiner relies upon European '743 for a disclosure of the
claimed regenerative materials in a refrigerator and concludes
that it would have been obvious for one of ordinary skill in
the art to substitute the materials of European '743 for the
heat regenerative materials of British '958. However, the
flaw in the examiner's reasoning is that it is established on
this record, via appellants' disclosure and European '743
cited by the examiner, that there are two types of
refrigeration systems for cooling superconductor materials:
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