Appeal No. 1998-1578
Application No. 08/543,827
divergent from the path that was taken by the applicants. In
re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir.
1994).
Here, we observe that Ho describes many problems with
prior art annealing methods that involve RTAs, even going as
far to say that prior art RTAs “are not production worthy.”
(Column 3, lines 26-27.) Based on this disclosure, it is our
opinion that one of ordinary skill in the art would have been
discouraged from using the prior art RTA methods described by
Ho. Accordingly, we see no reason why one of ordinary skill
in the art would have combined Ho’s teaching regarding prior
art RTAs with the teaching of Larson to arrive at the
appellants’ claimed method.
For these reasons, we reverse the examiner’s rejection of
claims 1 through 18 and 28 under 35 U.S.C. § 103 as
unpatentable over Larson in view of Ho.
New Grounds of Rejection
We enter the following new grounds of rejection pursuant
to 37 CFR § 1.196(b).3
3Although our discussion is limited to appealed claims 1
and 14, the examiner and the appellants should consider the
9
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