Appeal No. 1997-3335 Page 6
Application No. 08/315,454
barium compound starting material and a titanium compound starting material. Lipeles does not
describe including a boron compound in the solution.
The Examiner turns to Abe, Takagi, Bhargava and Soong for the missing description of using
boron compounds in dielectric films. The Examiner suggests that these references all teach that B O or
2 3
H BO reduces the sintering temperature of the dielectric ceramic film BaTiO . The Examiner3 3 3
concludes that it would have been obvious for one of ordinary skill in the art at the time the invention
was made to have modified the Lipeles metallo-organic film process with a boron additive as suggested
by the secondary references to lower annealing temperatures, enable the use of lower cost electrode
compositions and thus lower the cost of manufacturing (Answer, pages 5 and 6).
However, we are not convinced that Abe, Takagi, Bhargava or Soong would have led one of
ordinary skill in the art to add a boron compound to the coating solution of Lipeles. Abe, Takagi, and
Soong describe powder processing techniques for forming sintered ceramics. Bhargava is directed to
a process of melting powders at 1300-1400°C to form a glass, placing the glass on a substrate and
remelting and heating at 950 to 1050°C (col. 1, line 47 to col. 2, line 5). Appellants point out that the
temperatures, homogeneity, and the reactions differ significantly between the solution process of Lipeles
and the higher temperature powder and melt processes of the secondary references (Brief, page 16).
The Examiner has provided no convincing rationale tending to show that one of ordinary skill in the art
would have had a reasonable expectation that the boron compounds of the secondary references would
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