Appeal No. 2001-1697 Page 5
Application No. 09/059,718
In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88
(Fed. Cir. 1984). As part of meeting this initial burden, the
examiner must determine whether the differences between the
subject matter of the claims and the prior art “are such that the
subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art”
(emphasis added). 35 U.S.C. § 103(a)(1999); Graham v. John Deere
Co., 383 U.S. 1, 14, 148 USPQ 459, 465 (1966).
Here, as pointed out by the appellants in their briefs, the
examiner has not established any convincing reason, suggestion or
motivation for combining the references so as to arrive at the
claimed subject matter. Concerning this matter, the examiner has
not carried the burden of reasonably showing why one of ordinary
skill in the art would have employed the water and HCl of
Fujishiro in the gaseous mixtures used in the processes of either
Yamasaki or Kakoschke. More specifically, Yamasaki teaches that
the presence of hydrogen containing compounds such as water in
the gaseous oxidizer atmosphere would not be compatible with the
method disclosed therein since hydrogen would be included in the
oxidized film that is formed resulting in charge mobility and
other problems. Indeed, Yamasaki teaches that the presence of
hydrogen containing compounds such as water should be less than 1
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