Appeal No. 1997-3335 Page 9
Application No. 08/315,454
taught including steps of forming an electrode on a substrate, depositing two or more precursor films
over the electrode, annealing and forming a second electrode over the annealed laminate. Kim
describes forming the dielectric ceramic and then forming the electrodes on both surfaces of the
dielectric. The sequence of layer forming is different than that required by the process of claim 8.
We conclude that, on the present record, the Examiner has not established a prima facie case
of obviousness with respect to claims 1-10. Therefore, we reverse.
OTHER ISSUES
We are unsure how “apparently” limits claim 1. Page 3 of the specification seems to indicate
that the temperature requirements may or may not be reduced. We have not found it necessary to rely
on the language of claim 1 reciting “whereby said boron in said precursor apparently lowers the
processing temperature required to produce said titanate grains” as this language does not seem to
further limit the method. “While it is not a requirement of patentability that an inventor correctly set
forth, or even know, how or why the invention works, neither is the patent applicant relieved of the
requirement of teaching how to achieve the claimed result, even if the theory of operation is not
correctly explained or even understood.” Newman v. Quigg, 877 F.2d 1575, 1581, 11 USPQ2d
1340, 1345 (Fed. Cir. 1989), cert. denied, 495 U.S. 932 (1990)(citations omitted). That being said,
Appellant may wish to delete the theory from claim 1.
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