Appeal No. 2006-2922 Page 12
Application No. 10/012,677
material respect taught away’ from the claimed invention.” In re Geisler,
116 F.3d 1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997) (quoting In
re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974)).
Lastly, we agree with appellants that the prior art relied on by the
examiner on this record fails to disclose or suggest controlling the amount
of silicon within the silicon-doped aluminum oxide by controlling the
evaporation rate of silicon monoxide, as claimed.
For at least the aforementioned reasons, we agree with appellants’
that the combination of references relied on by the examiner fails to fairly
teach or suggest all the limitations of representative claim 16. Therefore,
we agree with appellants’ that the examiner has failed to meet his/her
burden of presenting a prima facie case of obviousness. Accordingly, we will
reverse the examiner’s obviousness rejection of representative claim 16 as
being unpatentable over Lee in view of Vossen, and further in view of
Fujisada, Wolf-1, and Wolf-2. Because we have reversed the examiner’s
rejection of single independent claim 16, we will not sustain the examiner’s
rejection of any of the dependent claims 17-22 under appeal.
In summary, we will not sustain the examiner’s rejection of any of the
claims under appeal. Therefore, the decision of the examiner rejecting
claims 16-22 is reversed.
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