Appeal No. 1998-1069
Application No. 08/259,575
present. The Examiner then finds that to prevent ions from
reaching gate 5 during the implantation process one skilled in
the art would have been motivated to modify the method of
Schwabe using the method of Yamane et al.
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by 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). However, "[o]bviousness
may not be established using hindsight or in view of the
teachings or suggestions of the invention." Para-Ordnance
Mfg. v. SGS Importers Int'l, 73 F.3d at 1087, 37 USPQ2d at
1239, citing W. L. Gore & Assocs., Inc. v. Garlock, Inc. 721
F.2d at 1551, 1553,
220 USPQ at 311, 312-13.
We agree with Appellant that the Examiner has failed to
set forth a prima facie case. The Examiner must establish why
one having ordinary skill in the art would have been led to
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