Appeal No. 1996-2718
Application No. 08/221,207
adds "that one skilled in the art of ceramic processing has the knowledge required to select the
appropriate molding method required to produce a particular shape."8 The examiner further argues that
since Walz provides a molten material, "the selection of the specific apparatus used to provide such
material would have been obvious to one skilled in the art" and "an obvious matter of design choice."9
We reverse this rejection under 35 U.S.C. ' 103. As discussed above, Walz does not teach
the production of superconducting materials or ceramic fibers and Bock does not teach making fibers
out of ceramic superconducting material. Neither reference teaches superconducting fibers, a required
element in the presently claimed invention, nor does either reference teach ceramic fibers. Because the
examiner has not met all the limitations of the claimed invention, he has not established a prima facie
case of obviousness under 35 U.S.C. ' 103. See In re Brouwer, 77 F.3d 422, 425, 37 USPQ2d
1663, 1666 (Fed. Cir. 1996). The examiner also has not shown any suggestion in the prior art for
combining the teachings of Walz and Bock to arrive at the presently claimed invention. Walz does not
indicate that fibers can be made from superconducting or ceramic materials, nor does Bock teach that
the ceramic superconducting materials can be made into fibers. The examiner has not pointed to any
suggestion, to one of ordinary skill in the art at the time the invention was made, that the ceramic
superconducting material of Bock or ceramic materials in general could be made into the fibers of Walz.
The examiner therefore has not sustained his burden of making a prima facie showing, based on the
record as a whole, that the claimed invention would have been obvious to one of ordinary skill in the art
at the time the
8 Supra, pp. 10 and 11.
9 Supra, pp. 6 and 12.
10
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007