Appeal No. 1997-3767 Page 8
Application No. 08/443,556
thus these elements must be limited in amount, preferably to 10 to 20 percent by weight (col. 6, lines
32-43). This is below the level required by claim 11. Furthermore, the Examiner makes no convincing
finding that either Futamoto or Tsuno describe a silicon carbide layer in which the overall percentage of
silicon is within the claimed range.
Claim 14 also requires the formation of a silicon carbide protective layer with 5 to 25 atomic
percent silicon, oxiding the silicon and applying a lubricating organic film bonded to the silicon oxide.
Claim 14 is rejected over Funkenbusch and Koliska in view of Futamoto. None of these references
describe forming an organic lubricating layer on a protective layer as required by claim 14.
Furthermore, the Examiner has failed to provide any evidence or argument tending to show that the
addition of such a separate organic lubricating film would have been obvious to one of ordinary skill in
the art. Therefore, the Examiner has failed to show that one of ordinary skill in the art would have
found it obvious to provide such an organic lubricating film over a protective film of silicon carbide
having been oxidized at least partially to silicon oxide.
We agree with the Appellants that one of ordinary skill in the art would not arrive at the claimed
invention solely by combining the teachings of the prior art with the general knowledge of those of
ordinary skill in the art. Absent from the prior art and general knowledge of those of ordinary skill in
the art relied on by the Examiner is the requisite suggestion or motivation for combining the applied
reference teachings, based upon a reasonable expectation of success, in such a manner as to result in
the appellants’ claimed subject matter. In re O’Farrell, 853 F.2d 894, 903-904, 7 USPQ2d 1673,
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