Appeal No. 96-4103
Application 08/363,479
him and had to rely strictly on the disclosure of Yokoyama, we
can find no motivation for the artisan to deliberately change
the disclosed mole fraction values in Yokoyama in the claimed
manner. The examiner’s requirement for a showing of
criticality or unexpected results is misplaced here because
there is no overlap between the claimed range and the prior
art range. Appellants are not under a burden to prove
anything until the examiner has established a prima facie case
of the obviousness
of the claimed invention. Without a suggestion in the applied
prior art that increasing the aluminum mole fraction above 0.5
would be desirable, there is no motivation to make the claimed
modification. The examiner must find support for the
modification someplace besides appellants’ own disclosure.
Such support is lacking here.
We also note that the examiner cannot properly find
obviousness by asserting that manufacturing imperfections may
have led to the overlap of the claimed invention with a prior
art device. The completely unintended production of a
Yokoyama device having an aluminum mole fraction greater than
0.5 would not lead the artisan to deliberately seek to produce
this result. To find obviousness within the meaning of 35
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