Appeal No. 1998-1077 Page 8
Application No. 08/458,999
sizes typically found in thin films” (specification, page 4,
lines 23-28). We also observe that a method wherein the
constituents are preferably combined in a solution and
calcined in bulk is specified at page 7 of the specification.
The examiner simply has not established why the original
disclosure as a whole, including the above noted sections as
well as the original claims, would not have reasonably
conveyed to one of ordinary skill in the art that as of the
filing date of the application, appellants were in possession
of the claimed invention. In this regard, we note that
appellants’ position on this issue (brief, pages 12-17) is not
effectively refuted by the examiner in the answer.
For the above reasons, we reverse the rejection under
35 U.S.C. § 112, first paragraph.
Rejection under 35 U.S.C. § 103
The examiner acknowledges that appellants’ method
differs from Furukawa in that Furukawa does not expressly
disclose a method wherein an average grain size of a thin film
as herein claimed is obtained (answer, page 5). Nonetheless,
the examiner takes the position that “a person having ordinary
skill in the art at the time of the claimed invention would
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