Appeal No. 96-0386
Application No. 08/270,082
Cir. 1984). These showings by the Examiner are an essential
part
of complying with the burden of presenting a prima facie case
of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to independent claims 1, 9, and 15, the
Examiner seeks to modify the prior art method of Suehiro by
relying on Pinto for supplying the missing teaching of dry
etching a silicon nitride layer with a chemical comprised of a
Group VI element. In response, Appellants assert a lack of
suggestion or motivation in the references for combining or
modifying teachings to establish a prima facie case of
obviousness. After careful review of the Suehiro and Pinto
references, we are in agreement with Appellants' stated
position in the Brief. 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, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992). The
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