Appeal No. 2001-1512 9
Application No. 09/273,541
or motivation in the reference to do so.”). See also In re
Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14
(Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984) (“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").
Moreover, to assert that the cooling gas flow rate
inherently corresponds to the leakage rate at the wafer-chuck
interface when valve 17 is closed, places the initial burden on
the Examiner to establish that “the missing descriptive matter is
necessarily present in the thing described in the reference, and
that it would be so recognized by person of ordinary skill.” In
re Robinson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-1951 (Fed.
Cir. 1999), citing Continental Can Co. v. Monsanto Co., 948 F.2d
1264, 1269, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991) (inherency may
not be established by probabilities or possibilities or by the
mere fact that a certain thing may result for a given set of
circumstances). In this case, we agree with Appellant that both
valves 16 and 17 are manipulated or continuously controlled
(brief, page 14), since the Examiner provides no showing that
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007