Appeal no. 97-1293
Application no. 08/281,812
In response to appellant’s arguments, the examiner maintains (pp. 6-16 of his
Answer) that a prima facie case of obviousness has been made and the burden has
shifted to the appellant to show that the instantly claimed subject matter is different from
and unobvious over that taught by the reference, further noting that “arguments of counsel
cannot take place of evidence in the record.” The examiner determines that “the artisan
would know [sic—would have known] that titanium diboride is desirable in
specific applications due to its physical properties” and responds to the appellant’s
arguments with the statement that “one cannot show non-obviousness by attacking
references individually where the rejections are based on combinations of references.”
4. Opinion
We reverse the rejection of claims 1-10 under 35 USC ' 103 as obvious over
Lukacs in view of Yajima. The examiner has the initial burden to establish a prima facie
case of unpatentability. See In re Lowry, 32 F.3d 1579, 1584, 32 USPQ 2d 1031, 1035
(Fed. Cir. 1994); and In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ 2d 1443, 1444, (Fed.
Cir. 1992). In our view, the examiner has not sustained his burden and therefore the
burden of persuasion has not shifted to the appellant. See In re Rijckaert, 9 F. 3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993).
The claims at issue are directed to a method. As discussed above, neither Lukacs
nor Yajima teaches a method with a step of sintering a handleable green body at a
temperature “greater than 2000EC”. To render a method claim obvious, the prior
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