Appeal No. 1998-2311
Application No. 08/401,869
references so as to set forth a prima facie case of
obviousness. After careful review of the applied prior art in
light of the arguments of record, we are in agreement with
Appellants’ position as stated in the Briefs. The mere fact
that the prior art may be modified in the manner suggested by
the 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).
It is our view that, while a showing of proper motivation
does not require that a combination of prior art teachings be
made for the same reason as Appellants to achieve the claimed
invention, we can find no motivation for the skilled artisan
to apply the DC voltage electrode biasing feature of Walker to
the plasma chamber structure of Heinrich. There is nothing in
the disclosure of Heinrich to indicate that impurity removal,
the problem addressed by Walker, was ever a concern. It is
our opinion that the only basis for applying the teachings of
Walker to the plasma chamber structure of Heinrich comes from
an improper attempt to reconstruct Appellants’ invention in
hindsight.
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