Appeal No. 2000-0834
Application No. 08/798,679
available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley, 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1438
(Fed. Cir. 1988), cert. denied, 488 U.S. 825 (1988). These
showings by the examiner are an essential part of complying with
the burden of presenting a prima facie case of obviousness. Note
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). Furthermore, "[t]hat knowledge can not come from the
applicant's invention itself." Oetiker, 977 F.2d at 1447, 24
USPQ2d at 1446.
The examiner has provided no evidence that a ROM is an
obvious application of a fuse material, nor any teaching or
suggestion in the prior art why the skilled artisan would have
been motivated to substitute materials of Atkins' fuse for the
electrolyte layer of Marrocco's memory element. Thus, the
examiner has failed to establish a prima facie case of
obviousness. Consequently, we cannot sustain the rejection of
claim 9 or its dependents, claims 2 through 4 and 6 through 8.
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