Appeal No. 95-3611
Application 07/904,419
the examiner’s position that ?figure 1 of the Deal reference
shows HCl connected to a gas line that can be used to combine HCl
with HF/H O? and accordingly that ?the use of HCl as part of an
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etching mixture is clearly anticipated or at least strongly
suggested by the Deal reference? (Answer, page 4). As fully
explained by the appellant in his Brief, however, Deal contains
utterly no teaching or suggestion of combining hydrogen fluoride
and hydrogen chloride as required by each of the claims on
appeal. Contrary to the examiner’s belief, the mere fact that
the apparatus shown in Figure 1 of this reference ?can be used to
combine HCl with HF/H O? (emphasis added) is inadequate to
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establish either anticipation or obviousness in relation to the
here claimed step of combining hydrogen fluoride and hydrogen
chloride. It is well settled with respect to obviousness (and a
fortiori anticipation) that the mere fact that the prior art
could be so 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. 1965).
In light of the foregoing, it is apparent that we cannot
sustain the examiner’s § 102(b) rejection of claim 1 as being
anticipated by Deal. Moreover, since the examiner does not even
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