Appeal No. 2000-0422
Application 08/864,044
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), citing In re Gordon, 773 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). “Obviousness may not be established using
hindsight or in view of the teachings or suggestions of the
inventor.” Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d
1087, 37 USPQ2d at 1239 (Fed. Cir. 1995), citing W.L. Gore &
Assocs., v. Garlock, Inc., 721 F.2d at 1551, 1553, 220 USPQ at
311, 312-13 (Fed. Cir. 1983).
Appellants further argue (brief at page 12) that “even if
the references are combined they do not teach applicants
invention as defined in claim 1. There is nothing to suggest a
topography on the ground plane of up to 4 mils with a thickness
of the adhesive only 0.5 to 2.0 mils. There is no suggestion
that this would work, let alone improve electrical
characteristics.” The Examiner responds (answer at page 6) that
“it has been held that where the general conditions of a claim
are disclosed in the prior art, discovering the optimum or
workable ranges involves only routine skill in the art. In re
Aller, 105 USPQ 233.” We are not persuaded by the Examiner’s
arguments. Optimizations can be a matter of routine
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