Appeal No. 2000-1041
Application No. 08/871,705
would have been expected to function as a low deterioration film in
the structure of Ovshinsky. See Dembiczak, supra.
Finally, we note that claim 10 on appeal requires a certain
microhardness value. As correctly argued by appellants (Brief,
pages 5-6), this limitation is not disclosed or taught by any cited
reference. In the restatement of the rejection, the examiner only
finds that Ovshinsky does not teach the microhardness value
(Answer, page 5). In the “Response to Argument” on page 10 of the
Answer, the examiner argues that since the combination of
references teach the same sputtering conditions, the microhardness
feature would be produced. However, the examiner has failed to
show that the various sputtering conditions taught by the
references would have necessarily produced the microhardness values
recited in claim 10 on appeal. See In re Robertson, 167 F.3d 743,
745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999).
For the foregoing reasons, we determine that the examiner has
failed to establish a prima facie case of obviousness in view of
the reference evidence. Accordingly, the examiner’s rejection is
reversed.
5
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007