Appeal No. 1999-0769 Page 6
Application No. 08/661,532
urge that a material having Si-Si linkages is not taught or
suggested by Xue as a feed material for the pyrolysis step.
We side with appellants on this issue. The examiner has
the burden of producing evidence and/or a convincing line of
technical reasoning to establish that appellants’ process,
including an Si-Si linkage in the material to be pyrolyzed
would have been taught or suggested to one of ordinary skill
in the art by the teachings of Xue. This, the examiner has
not done. Rather, the examiner contends that “[i]f a portion
of the materials of the prior art are silane polymers anytime
during manufacturing, the claims have been met” (answer, page
5). However, such speculation by the examiner as to whether
an Si-Si linkage may result from the hardening and curing
steps of Xue or possibly during some other process step simply
does not make out a prima facie case of obviousness.
For the foregoing reasons, we will not sustain the
examiner’s rejection of the method claims on appeal based on
this record.
Claims 13-16, 18 and 19
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