Appeal No. 1998-1068
Application No. 08/472,833
target material. (Examiner’s Answer, pages 4-5). The examiner concludes, however, that laser beams
and electron beams are conventional vapor deposition methods and that it would have been obvious to
one skilled in the art to use a laser beam in Behn’s process because of Behn’s generic disclosure of a
vapor deposition process and because analogous results would have been expected. (Examiner’s
Answer, p. 5). Alternatively, the examiner cites Schultz as teaching that electron beam evaporation and
laser deposition are known alternative vapor deposition techniques. (Examiner’s Answer, p. 5).
To establish a prima facie case of obviousness, the prior art reference (or references when
combined) must teach or suggest all the claim limitations. See In re Wilson, 424 F.2d 1382, 1385,
165 USPQ 494, 496 (CCPA 1970) (“All words in a claim must be considered in judging
the patentability of that claim against the prior art.”). Furthermore, any motivation to modify the prior
art references must flow from some teaching in the art that suggests the desirability or incentive to make
the modification needed to arrive at the claimed invention. In re Napier,
55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed Cir. 1995); In re Gorman, 933 F.2d 982, 986-87,
18 USPQ2d 1885, 1888-89, (Fed. Cir. 1991) (“When it is necessary to select elements of various
teachings in order to form the claimed invention, we ascertain whether there is any suggestion or
motivation in the prior art to make the selection made by the applicant. [Citations omitted] . . . The
extent to which such suggestion must be explicit in, or may be fairly inferred from, the references, is
decided on the facts of each case in the light of the prior art and its relationship to the applicant’s
invention.”).
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