Ex parte MATSUURA et al. - Page 6




          Appeal No. 1997-2628                                       Page 6           
          Application No. 08/383,713                                                  


               While the examiner notes that the device made by Higaki                
          may have applicability as a microwave device component, we do               
          not share the examiner’s viewpoint that such a general                      
          teaching of utility would have suggested the claimed process                
          herein.  In this regard, we note that the showing of the                    
          teaching or motivation to combine prior art references must be              
          clear and particular.  See In re Dembiczak, 175 F.3d 994, 999,              
          50 USPQ2d 1614, 1617 (Fed. Cir. 1999).                                      
               We are cognizant that Higaki mentions a Josephson device,              
          Matisoo switching elements, Anacker memory device and Super-                
          conducting Quantum Interference Device as possible                          
          applications of thin film devices (column 1, lines 24-40 and                
          carryover sentence, columns 4 and 5).  However, the examiner                
          has not convincingly explained how any of these potential                   
          applications would have suggested a method corresponding to                 
          the claimed method herein.  In addition, the examiner has not               
          pointed to any particular disclosure of either of the                       
          secondary references that would suggest modifying the process               
          of Higaki to arrive at the herein claimed manufacturing method              
          steps.  We note, for example, that the transmission line (10)               
          in Figure 1 of Jack includes a ground plane (12) on one side                







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