Appeal No. 1997-2026
Application 08/317,108
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
Furthermore, the Federal Circuit states that “[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 Fitch, 972 F.2d 1260, 1266 n.14, 23
USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re
Gordon, 773 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). “Obviousness may not be established using hindsight or
in view of the teachings or suggestions of the inventor.”
Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d 1087, 37
USPQ 2d at 1239 (Fed. Cir. 1995), citing W. L. Gore & Assocs.,
v. Garlock, Inc., 721 F.2d at 1551, 1553, 220 USPQ at 311,
312-13 (Fed. Cir. 1983).
Following the above precepts, we agree with Appellants.
The claimed process by its very nature requires high precision
thin-film techniques such as chemical vapor deposition. The
Examiner has not convinced us why an artisan would look to
Uchino (which involves a totally different process) to combine
with Miyasaka (which involves the thin-film technology) to
-10-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007