Appeal No. 1996-2769 Application 08/270,089 luminescent labels in biology.” Id., p. 6. The examiner points out that the method of making the particles disclosed by Matijevic is substantially the same as steps (a) - (c) of the claimed method. However, the examiner recognizes that there are two deficiencies in the Matijevic patent, viz., it (i) only teaches a method of making particles comprising single rare earth oxides, and (ii) fails to teach the conversion of the oxides to oxysulfides. The examiner does not offer any reason as to why it would have been obvious to one of ordinary skill in the art to convert the single earth oxides disclosed by Matijevic to the corresponding oxysulfide, but she attempts to account for the first deficiency by urging that the patent “suggests to one of ordinary skill in the art to produce spherical colloidal oxides of other known activated rare earth oxides, such as (Y Yb Er ) O discussed by 0.86 0.08 0.06 2 3 appellant in the specification, by the taught process” [emphasis added]. Id. This last statement underscores our principal reason for finding that the examiner has failed to establish a prima facie case of obviousness. We direct the examiner’s attention to the holding of the court in Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996)(citation omitted): It is well-established that before a conclusion of obviousness may be made based on a combination of references, there must have been a reason, suggestion, or motivation to lead an inventor to combine those references. Here, the only place where we find a teaching of a method of making spherical phosphor particles of less than one micron in size comprising a rare earth phosphor 5Page: Previous 1 2 3 4 5 6 7 8 9 NextLast modified: November 3, 2007