Appeal No. 2001-1092
Application No. 09/169,490
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). It is also well established that before a conclusion of
obviousness may be made based on a combination of references, the
examiner must show that there was a reason, suggestion or
motivation to lead an inventor to combine those references as
proposed. See Pro-Mold and Tool Co. v. Great Lakes Plastics Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). The
modification of the prior art is not obvious unless the prior art
suggested the desirability of the modification. See In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
The examiner’s finding of “motivation” is not convincing. We
do not agree with the examiner that the prior art suggests the
desirability of the proposed modification. Miyazaki ‘969, which is
a continuation-in-part of Miyazaki ‘864, teaches that the film of
this invention is “a low emissivity film which is excellent in
durability, especially in moisture resistance.” Col. 1, ll. 10-12.
Therefore, the teaching in Miyazaki ‘864 cited by the examiner of
“a Low-E [emissivity] film ... excellent in durability, especially
in moisture resistance” (Answer, page 5, citing col. 1, ll. 42-45)
does not provide any convincing advantages or motivation for
modifying the sputtering process of Miyazaki ‘969 (see the Brief,
page 6). Furthermore, the reactive sputtering taught by Miyazaki
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