Appeal No. 1996-2086
Application 08/255,588
has assumed that claims 1 and 8 are anticipated by the Fuller patent, and, thus, he has
failed to provide any reasons as to why these claims would have been obvious in view of
the applied prior art. Thus, what we have before us is a rejection which lacks a proper
2
foundation and consists of undirected generalities. A conclusion of obviousness cannot
be based on generalities. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968); In re Freed, 425 F.2d 785, 788, 165
USPQ 570, 572 (CCPA 1970). Accordingly, absent a fact-based explanation from the
examiner as to why the applied prior art would have rendered the claimed subject matter
obvious to one of ordinary skill in the art, we are constrained to reverse the rejection.
III.
We remand this application to the examiner to analyze the breadth of the
independent claims and to determine whether all the relevant prior art has been
considered.
In addition, the examiner is directed to consider whether the teachings of Fuller as
to the heating of a substrate (germanium) coated with suitable materials such as antimony,
gold, silver, tin or zinc, to a temperature between 450E and 900EC, cooling the coated
substrate and coating material, and removing the coated material (col. 2, line 60- col. 3,
2In view of the sweeping nature of the rejection, it is not clear to us which claims the
examiner is actually addressing.
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