Appeal No. 1998-2288
Application 08/600,150
well known that numerous mixed metal oxides are useful as
pigments in the instant substrates” (Answer, page 8).
However, the examiner has not presented any convincing
evidence or reasons why the references should be combined in
the manner proposed, i.e., why the dissimilar mixed metal
oxide pigments of Joyce, Katz, Bryson, Wanmaker and Borrelli
would have suggested that the particular mixed metal oxides of
Choy, Wu, and Grigenaite, useful as intermediates or phases in
a superconductor, would have been useful as pigments with the
specified substrates. See In re Dembiczak, 175 F.3d 994, 999,
50 USPQ2d 1614, 1617 (Fed. Cir. 1999)(The evidence of a
suggestion, teaching or motivation to combine features of
different references must be clear and particular).
For the foregoing reasons and those set forth in the
Brief, we determine that the examiner has not met the initial
burden of presenting a prima facie case of obviousness.
Accordingly, the rejections of the claims on appeal under 35
U.S.C. § 103 over Lafon in view of Choy, Wu and Grigenaite or,
in the alternative, over Choy, Wu and Grigenaite in view of
Lafon and Joyce, Katz, Bryson, Wanmaker and Borrelli are
reversed.
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