Appeal No. 1998-1850
Application No. 08/596,613
insulating layer. That is, with motivation in the prior art for actions resulting in the
placement of implanted metal ions in an insulating layer, and with motivation in the prior art
for subsequently removing a portion of the insulating layer, then as a consequence the
action of removing “at least a portion” of the ions would have been suggested by the prior
art, even if the artisan’s purpose was not directed to removing “at least a portion” of the
ions. Even in an anticipation context, the prior art need only show the steps of the claimed
process to establish unpatentability. It is not required that the artisan recognize what may
be inherent in the process. See Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 633,
2 USPQ2d 1051, 1054 (Fed. Cir. 1987) (disclosed process held to anticipate claimed
invention, even if inventor of disclosed process did not recognize inherent property).
Again, we emphasize that we are not ruling on the facts supporting the rejections of
claims 15 through 18. However, we agree with the general proposition, apparently
rejected by appellants, that in order to show obviousness there is no requirement that the
prior art disclose the patent applicant’s precise reason for endeavor. For the purposes of
an obviousness enquiry, there is no requirement that an artisan’s reasons for making
modifications of the prior art be the same as that of the patent applicant. See In re Kemps,
97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996) (citing In re Dillon, 919
F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (in banc) (“Although the
motivation to combine here differs from that of the applicant, the motivation in the prior art
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