Appeal No. 1996-2246
Application No. 08/052,910
We agree with Appellants that no prima facie case of
obviousness has been established since the boron doping
concentration value of 2x10 cm taught by Ishii clearly does20 -3
not encompass or fall within the specific claimed doping
18 -3 20 -3
concentration range of “between 10 cm and 10 cm .” As to
the Examiner’s contention of the obviousness to the skilled
artisan of optimizing the doping concentration to an
appropriate value, we also agree that no teaching exists in
the references that would support the desirability of
modifying the disclosed doping concentration to achieve
Appellants’ claimed doping concentration value. 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). Thus, the Examiner’s 35 U.S.C. § 103
rejection of claim 7 is not sustained.
In summary, the Examiner’s 35 U.S.C. § 103 rejection is
sustained with respect to claims 1, 2, 6, and 8-10 but is not
sustained with respect to claim 7. Accordingly, the decision
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