Appeal No. 2005-2234
Application No. 10/135,005
(Figures 1 and 6) is shown to tilt, Kaga’s ‘vertical bore’ may
still be made.” Brief, page 5.
Appellants argue that merely stating that a reference could
be modified is insufficient to sustain a rejection. Appellants
state that the examiner must provide some motivation other than
hindsight to make the modification.
We determine that the examiner’s statement that the
motivation to modify Kaga is “to impart an ion beam at an acute
angle, greater than 0˚, to the substrate” is lacking. The
initial burden of presenting a prima facie case of obviousness
rests on the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). Where an obviousness
determination is based on a combination of prior art references,
there must be some “teaching, suggestion or incentive supporting
the combination.” In re Geiger, 815 F.2d 686, 688, 2 USPQ2d
1276, 1278 (Fed. Cir. 1987). “[T]he factual inquiry whether to
combine references must be thorough and searching.” McGinley v.
Franklin Sports, Inc., 262 F.3d 1339, 1351-52, 60 USPQ2d 1001,
1008 (Fed. Cir. 2001). It is impermissible to conclude that an
invention is obvious based solely on what the examiner considers
to be basic knowledge or common sense. See In re Zurko, 258
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