Appeal No. 96-3684
Application 08/318,034
particles having a diameter less than 100 D). The examiner relies on Zhao as
disclosing the formation of quantum sized phosphor particles of ZnS and CdS. The examiner concludes
that “[i]t would have been obvious for one of ordinary skill in the art to have used Zhao’s
100 A [sic, D] or less ZnS particles in Hilsum” because “[o]ne of ordinary skill in the art would have been
motivated to do this in order to create an EL device with characteristics different from bulk ZnS or to
increase band gap energies.” We do not find that the examiner has established a prima facie case of
obviousness. The examiner has not explained why the increased band gap energies and why the need “to
create an EL device with characteristics different from bulk ZnS” would have motivated one of ordinary
skill in the art to use quantum sized particles in Hilsum’s device. We find that the suggestion to use such
phosphors could only have come from appellants’ specification. “Both the suggestion and the expectation
of success must be founded in the prior art, not in the applicant*s disclosure.” In re Dow Chemical Co.,
837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988). Accordingly, we reverse Rejection II.
REJECTION III
The examiner rejected the claims on appeal under 35 U.S.C. § 103 over Herron, Enoki and EPSE.
Herron discloses a porous glass with large (10-500 D) interconnected pores which are filled with a
semiconductor material such as ZnS or CdS (col. 3, lines 4-44; col. 4, lines 4-8). The porous glass, as we
have interpreted the claims, would serve as a “surfactant.” Herron further discloses that
[t]o protect the semiconductor clusters and maintain dispersion, the porosity of the glass
is removed by filling all of the available remaining void volume with polymer. This can be
done in an inert atmosphere by partially immersing the glass/semiconductor composite in
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