Appeal No. 1997-0350
Application No. 08/191,384
(sentence bridging pages 2 and 3 of the final rejection,
emphasis added).
While the examiner's reasoning has a certain, immediate
logical appeal, it is well settled that the mere fact that the
prior art could be modified would not have made the
modification obvious unless the prior art suggested the
desirability of the modification. In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984), and cases cited
therein. Manifestly, it is quite evident from a review of
appellants' specification that Law could be modified in the
manner proposed by the examiner to arrive at appellants'
claimed invention. Although it stands to reason that the
throttle valve could be more effectively cleaned if positioned
as close as possible to the vacuum chamber, such that the
localized etching step of Law could act upon the throttle
valve, the examiner has not established on this record that
modifying the prior art arrangement of throttle valve and
shut-off valve would have been an obvious option for one of
ordinary skill in the art, particularly in terms of how such a
rearrangement of the valves would affect the overall operation
of the deposition process. In our view, the examiner has
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