Appeal No. 1998-0880
Application No. 08/649,909
effect. At most, the cited passage of Kamiguchi (column 4,
lines 54-59) indicates ferromagnetic metals and half metals
are interchangeable. Thus, we see no evidence of half metals
amplifying the MR effect, and thus no basis for the Examiner’s
expressed motivation.
Appellants argue that since the semiconductor layer in
Kamiguchi is an essential feature of the Kamiguchi device, and
since the combination of Kamiguchi and Nakatani would not have
the semiconductor layer, one would not be motivated to make
the combination. (Brief-pages 5 and 6.)
We agree with Appellants, there is a lack of motivation
to make the combination put forward by the Examiner.
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). "Obviousness may
not be established using hindsight or in view of the teachings
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007