Appeal No. 95-4850
Application 08/204,728
Claims 1-3 and 14-16 stand rejected under 35 U.S.C. § 103 as unpatentable over Stultz in
view of JP60-236216 and further in view of JP5-10677. Claims 4-7 stand rejected under 35 U.S.C. §
103 as unpatentable over Stultz in view of JP60-236216 and further in view of JP5-10677 and even
further in view of Vu. Claim 8 stands rejected under 35 U.S.C. § 103 as unpatentable over Stultz in
view of JP60-236216 and further in view of JP5-10677 and even further in view of JP62-94925.
The examiner says that it would have been obvious to modify Stultz in view of JP60-236216
and JP5-10677 by adding a heating disk to Stultz. Appellants argue that Stultz teaches away from an
intermediate heating disk because it would provide undesirable outside-in heating.
We agree with appellants. The mere fact that the prior art may be modified in the manner
suggested by the examiner does not make the modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-
84 n.14 (Fed. Cir. 1992). In the present case, Stultz clearly teaches that no heating disk should be
placed between the light and the substrate because that would heat the film from the outside in, which is
just the problem Stultz is trying to avoid. Therefore, the rejections will not be sustained.
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Last modified: November 3, 2007