Appeal No. 1999-2119
Application No. 08/815,410
ordinary skill in the art to modify the teachings [i.e., the
claim teachings] of Watanabe ‘787 to provide resist compositions
absent a nitrogenous compound” because “[d]espite what the
secondary references may teach, modification of [the claimed
subject matter of] Watanabe ‘787 in this manner would be
completely contrary to the reference objectives and one of
ordinary skill in the art would have no motivation to make such a
modification” (brief, page 18). Unlike the appellants, we
perceive merit in the examiner’s position.
The examiner’s conclusion is supported by well established
case law reflecting that it would have been obvious for one of
ordinary skill in the art to eliminate a component of a prior art
composition along with its attendant function. In re Thompson,
545 F.2d 1290, 1294, 192 USPQ 275, 277 (CCPA 1976); In re Kuhle,
526 F.2d 553, 555, 188 USPQ 7, 9 (CCPA 1975); In re Marzocchi,
456 F.2d 790, 793, 173 USPQ 228, 229-30 (CCPA 1972); In re Edge,
359 F.2d 896, 899, 149 USPQ 556, 557 (CCPA 1966). Moreover,
contrary to the appellants’ belief, the artisan would have been
motivated to eliminate the nitrogenous component of the
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