Appeal No. 95-4966
Application No. 08/072,182
motivation to combine the references. [Citation omitted].” In
re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed.
Cir. 1998). When determining the patentability of a claimed
invention which combines several elements, “the question is
whether there is something in the prior art as a whole to
suggest the desirability, and thus the obviousness, of making
the combination. [Citations omitted].” In re Rouffet, 149
F.3d at 1356, 47 USPQ2d at 1456. It is noted that evidence of
a suggestion, teaching or motivation to combine may come from
the prior art references themselves, the knowledge of one of
ordinary skill in the art, or from the nature of the problem
to be solved. See Pro-Mold & Tool Co. v. Great Lakes
Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed.
Cir. 1996).
The examiner’s evidence of a suggestion to combine the
process of Debe to make the microstructures on the substrate
of Perrotta is the teaching in Perrotta that
Substrates with the preferred single-crystal
filament growths on them can be manufactured by
a number of different processes, such as the Gas Phase
Method, the Gas-Liquid Solid Method, the Evaporation
Method, and the Replication Method. (Column 2,
lines 61-65, see the Answer, pages 5-7).
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007