Appeal No. 2003-0269
Application No. 09/313,547
possessed by the admitted prior art. As indicated in the above
quotation, the examiner believes it would have been obvious to
provide the admitted prior art with barrier layers “in order to
prevent short circuit between the electrodes” (final Office
action, page 4) pursuant to the teachings of Tsai.
However, the examiner points to nothing (and we find
nothing) in the record before us to support a determination that
the admitted prior art possesses the short circuit problem caused
by impurities which is present in the liquid crystal display
devices of Tsai. It is apparent, therefore, that the rejection
advanced on this appeal is grounded upon the examiner’s implicit
assumption that the applied prior art possesses the problem
addressed and solved by Tsai. This circumstance is fatal to the
examiner’s obviousness position since it is well settled that a
section 103 rejection must rest on a factual basis rather than
assumption. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
For the reasons set forth above, we agree with the
appellants that the only motivation for providing the admitted
prior art with barrier layers is derived from the appellants’ own
disclosure. Thus, the most fundamental deficiency of the
rejection under review is that it is based upon impermissible
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