Ex parte WONG - Page 3




          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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