Appeal No. 1997-3390
Application No. 08/354,384
substrate to which the coating will adhere can be used. The
Examiner further states that the references are combinable
since the step of bead or grit blasting to roughen the surface
is optional and may be omitted. The Examiner adds that
Santangelo teaches coating of a semiconductor substrate which
may be combined with the plasma spraying process of Merz since
both processes are performed at low temperatures and will not
affect the substrate.
The Federal Circuit states that "[t]he 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), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). It is further
established that "[s]uch a suggestion may come from the nature
of the problem to be solved, leading inventors to look to
references relating to possible solutions to that problem."
Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d
1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996), citing In
re Rinehart, 531 F.2d 1048, 1054, 189 USPQ 143, 149 (CCPA
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007