Appeal No. 1998-2649
Application No. 08/616,990
In addition to the foregoing, it is appropriate to
emphasize that the apparatus designs of Canon and Barnes are
different with respect to, inter alia, the disposition of
substrates and targets. This is significant because the
examiner has offered no explanation as to why an artisan with
ordinary skill would reasonably expect success in providing
the Canon apparatus design with an RF coil of the type used in
the Barnes apparatus design. Stated otherwise, it is unclear
on the record before us whether the advantages of using an RF
coil in an apparatus design of the type taught by Barnes would
attend use of such a coil in the different apparatus design of
Canon. We here remind the examiner that obviousness under
Section 103 requires both a suggestion to modify and a
reasonable expectation of success. In re O'Farrell, 853 F.2d
894, 903-04, 7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988).
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