Appeal No. 96-0096
Application No. 08/094,794
Secondly, the examiner's “generic to all” position is
simply not the appropriate test for assessing obviousness
within the meaning of 35 U.S.C. § 103. Instead, the test is
whether there is something in the prior art to suggest the
desirability, and thus the obviousness, of the modification in
question. In re Deminski, 796 F.2d 436, 442, 230 USPQ 313,
315 (Fed. Cir. 1986); Fromson v. Advance Offset Plate, Inc.,
755 F.2d 1549, 1556, 225 USPQ 26, 31 (Fed. Cir. 1985). Here,
there is simply nothing in Lagendijk's disclosure which would
have suggested modifying his process so as to result in the
here claimed mixing and introducing steps. On the contrary,
it is our perception that one with ordinary skill in the art
would have been discouraged from making such a modification
because the resulting process would be substantially more
complicated with no apparent advantage relative to patentee's
process.
In addition to the foregoing, we point out that Lagendijk
expressly evaluated various process parameters in Example 1
and that this parameter evaluation did not include any
alteration of the manner in which his reactive gases were
mixed and introduced into the furnace or reactor. From the
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