Appeal No. 2000-0747
Application No. 08/872,657
claimed by the Appellants.
In addition, our reviewing court requires the PTO to make specific findings on a
suggestion to combine prior art references. In re Dembiczak, 175 F.3d 994, 1000-01,
50 USPQ2d 1614, 1617-19 (Fed. Cir. 1999). Our reviewing court states further that the
"factual question of motivation is material to patentability, and could not be resolved on
subjective belief and unknown authority." In re Lee, Slip OP 00-1158, page 9. It is
improper, in determining whether a person of ordinary skill would have been led to this
combination of references, simply to [use] that which the inventor taught against its
teacher." W.L. Gore v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed.
Cir. 1983).
By our careful review of the record before us, we fail to find that the Examiner has
fulfilled the burden of showing a factual finding of a suggestion to modify the Staring
electron-injecting cathode having a thickness in the range of 100 to 5000 D to an ultra-thin
layer in the ranges set forth in Appellant’s claims. We appreciate that Utsugi does teach
an electron-injecting cathode layer having a thickness in the ranges claimed by the
Appellant. However, Utsugi teaches that the electron-injecting cathode layer is made of a
completely different material than the claimed alkaline earth metal in
the Appellant’s claims. The Examiner has not come to grips with why one of ordinary skill
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