Appeal No. 1997-2628 Page 7
Application No. 08/383,713
of dielectric layer (14) and a superconducting electrode (16)
on the opposite side, not opposing films of substantially the
same superconducting characteristics. While Dworsky discloses
a resonator device that has two superconducting layers
separated by dielectric layers (column 3, lines 10-64) with
the superconducting materials disclosed as being selectable
from a wide variety of listed options (column 6, lines 15-32),
the examiner has not convincingly explained how such general
teachings of Dworsky concerning a resonator device for use in
electronic filters would have suggested modifying the method
disclosed in Higaki in any manner let alone in a manner so as
to result in the appellants’ claimed process.
It is well settled that the examiner bears the initial
burden of presenting a prima facie case of unpatentability.
See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). On this record, the examiner has simply not
established any convincing reason or suggestion to combine the
references as proposed. The examiner has failed to point to
convincing evidence of a suggestion from the prior art, the
knowledge of one of ordinary skill in the art, or the nature
of the problem itself. See In re Dembiczak, supra.
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