Appeal No. 1999-2108 Page 6
Application No. 08/654,371
squeegee is nullified, that is, the direction in which the
squeegee is moved simply doesn’t matter (column 6, lines 51-
56). Thus, from our perspective, one of ordinary skill in the
art would have been taught by Teshima to modify the admitted
prior art system by replacing the elongated deposits on the
tops of the chamber walls by a series of circular or square
deposits, rather than by moving the squeegee only perpendicular
to the direction in which the walls extend, as is required by
the appellants’ claims. The examiner’s statement on page 4 of
the Answer that the selection of the squeegee direction would
have been obvious because it “per se solves no stated problem
nor serves any apparent purpose as evidenced by Teshima et al.”
simply is not correct, in that the appellants have explained
both the problem and the advantages of their solution in the
specification (pages 1-6, 9 and 10).
The mere fact that the prior art structure could be
modified does not make such a modification obvious unless the
prior art suggests the desirability of doing so. See In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). In the present situation, we fail to perceive any
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007