Appeal No. 1997-3303 Page 4
Application No. 08/171,126
by the appellants and the examiner. As a consequence of our review, we will reverse the rejection of
claims 2-6 and 8-13 under 35 U.S.C. § 103.
The examiner has failed to set forth a prima facie case. It is the burden of the examiner to
establish why one having ordinary skill in the art would have been led to the claimed invention by the
express teachings or suggestions found in the prior art, or by implications contained in such teachings or
suggestions. See In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
At the outset, we will clarify the record as to language found in the claims before us on appeal.
We note that the language “selectively etching the active layer down to the waveguide layer” in step (e)
of claim 12 is inconsistent with the method set forth in steps (b), (c), and (d) of the claim. Step (b) sets
forth that a waveguide is deposited upon the n-type contact layer. Step (c) sets forth depositing a
second n-type contact layer upon the waveguide. Accordingly, the active layer itself cannot be etched
down to the waveguide. Rather, both the active layer and the second n-type contact layer must be
etched away for the waveguide to be exposed. In light of the disclosure (page 1, lines 6-8), we
construe the limitation as requiring etching of both the active layer and the second n-type layer to
expose the waveguide in the region of the structure designed for formation of a grating. In addition, we
note that the term “electrodes” found in amended claim 12 does not appear anywhere in the disclosure
as filed . We agree with appellant (amendment B, Paper no. 5, filed March 13, 1995, page 3) that the1
1 The examiner (Office action, Paper no. 3, mailed on December 23, 1994) appears to make inconsistent
statements regarding the term “electrodes.” In this Office action, the examiner objected to the specification, and
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