Appeal No. 2002-0899
Application No.09/609,652
perhaps be motivated to replace the two copper electrodes of
Wilcox with the aluminum electrode of Kim. However, we find no
reason whatsoever, and the Examiner has provided none, for one of
ordinary skill to replace only one of the copper electrodes of
Wilcox with an aluminum one, and thereby arrive at the claimed
requirement of “... the first and second electrodes are made of
different materials from each other.”
Given the above deficiencies in the disclosures of the
applied prior art, it is our view that any suggestion to modify
Wilcox with Kim to arrive at Appellant’s claimed invention could
not come from any teaching in the Wilcox and Kim references but,
rather, only from Appellants’ own disclosure. In order for us to
sustain the Examiner’s rejection under 35 U.S.C. § 103, we would
need to resort to impermissible speculation or unfounded
assumptions or rationales to supply deficiencies in the factual
basis of the rejection before us. In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057
(1968), rehearing denied, 390 U.S. 1000 (1968).
In view of the above discussion, it is our view that, since
all of the limitations of the appealed claims are not taught or
suggested by the applied prior art Wilcox and Kim references, the
Examiner has not established a prima facie case of obviousness.
-7–7
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