Appeal No. 1999-2712 Page 13
Application No. 08/165,082
the two-pronged test, and logically would have commended itself to an artisan's attention in considering
the appellants’ problem. Thus, we conclude that Brandmayr is analogous art.
With regard to the issue of whether there is suggestion or motivation to combine the Brandmayr
er al. ‘829 patent with the other references, prior art can be modified or combined to reject claims as
prima facie obviousness as long as there is a reasonable expectation of success. Obviousness does
not require absolute predictability. In re Merck & Co., Inc., 800 F.2d 1091, 1097, 231 USPQ 375,
379 (Fed. Cir. 1986). However, at least some degree of predictability is required. Evidence showing
there was no reasonable expectation of success may support a conclusion of nonobviousness. See In
re Rinehart, 531 F.2d 1048, 1054, 189 USPQ 143, 148 (CCPA 1976). Brandmayr discloses the
fabrication of bulk ceramic capacitors having a dielectric formed of BST. In Brandmayr (col. 2, lines
35-41), BST is subjected to helium gas pressures of 10,000 - 30,000 p.s.i. at 1100E C for about one
hour. After cooling, the resultant structure is characterized by a dense, uniform microstructure less than
100 nanometers in size. From our analysis and findings, supra, we conclude that there would have
been no reasonable expectation of success that the high temperature and pressure needed to produce
the small grain size in the BST layer of Brandmayr, or the processes advanced by the examiner
(answer, page 6), applied to the process of Koyama, would have produced the small grain size in a
capacitor in an integrated circuit as claimed. One of ordinary skill in the art would not have considered
it predictable that the bulk ceramic process of Brandmayr could have been applied to the integrated
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