Ex Parte USHIKOSHI et al - Page 4




          Appeal No. 2002-0544                                                         
          Application No. 09/095,157                                                   


          corrosive metal does not support obviousness as it fails to                  
          provide sufficient reason for one skilled in the art to                      
          substitute gold for the brazing material of Fujii (brief, pages 6            
          & 7).                                                                        
               In response to Appellants’ arguments, the Examiner asserts              
          that gold is a well known brazing material that does not corrode             
          in air (answer, page 6).  The Examiner further points out that               
          Fujii indicates desirability of corrosion resistance and strength            
          in the joint (page 9, lines 20-21) and concludes that “one of                
          ordinary skill in the art would use gold as the main component               
          for the joint layer of Fujii []” (id.).                                      
               In rejecting claims under 35 U.S.C. § 103, the Examiner                 
          bears the initial burden of presenting a prima facie case of                 
          obviousness.  See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d              
          1955, 1956 (Fed. Cir. 1993).  The court further reasons in                   
          Karsten Mfg. Corp. v. Cleveland Gulf Co., 242 F.3d 1376, 1385, 58            
          USPQ2d 1286, 1293 (Fed. Cir. 2001) that for an invention to be               
          obvious in view of a combination of references, there must be                
          some suggestion, motivation, or teaching in the prior art that               
          would have led a person of ordinary skill in the art to select               
          the references and combine them in the way that would produce the            
          claimed invention.  However, “the Board must not only assure that            

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