Ex parte KANE - Page 5




                 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                                             

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