Ex parte SUMMERFELT et al. - Page 9




          Appeal No. 1998-1077                                       Page 9           
          Application No. 08/458,999                                                  


          have found it obvious to modify Furukawa’s procedure by                     
          ensuring that a small grain size was produced because same                  
          would have been anticipated to have a higher dielectric                     
          constant” (answer, page 5).                                                 
               We disagree with the examiner’s position since Furukawa                
          does not teach or suggest a method of forming a thin film on a              
          substrate having an average grain size as herein claimed.                   
          Rather, Furukawa (pages 5 and 6) teaches a method for forming               
          a mixed sintered body wherein a first component mainly                      
          comprising barium titanate is combined with a second                        
          perovskite component containing lead.  A binder and solvent                 
          may be used in mixing the components into a slurry and then                 
          the slurry is formed into a thick sheet (for example, 30                    
          micron thickness), which sheet is subsequently sintered                     
          (Furukawa, page 6).  The examiner has not fairly explained how              
          the method of Furukawa reasonably corresponds to appellants’                
          method such that one of ordinary skill in the art would have                
          been led to the here claimed subject matter by the teachings                
          of Furukawa.                                                                
               Moreover, the examiner’s opinion (answer, page 6) that                 
          appellants do not challenge the examiner’s viewpoints                       







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