Appeal No. 1998-1060
Application No. 08/433,664
method of obtaining this element in the coating. The Examiner
states:
Hence, it is the Examiner’s position that one
skilled in the art at the time [of] the invention
would have found the use of an alkoxy compound, i.e.
tetraalkoxy metal, as an obvious variation for the
manufacturing of a metal oxide layer. [Answer-page
7.]
We are not inclined to dispense with proof by evidence
when the proposition at issue is not supported by a teaching
in a prior art reference, common knowledge or unquestionable
demonstration. Our reviewing court requires this evidence in
order to establish a prima facie case. In re Knapp-Monarch
Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA 1961); In re
Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72 (CCPA 1966).
Furthermore, the Federal Circuit states that "[t]he mere fact
that the prior art may be modified in the manner suggested by
the Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). "Obviousness may not be
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