Appeal No. 2001-2244
Application No. 09/625,144
silicon oxide more readily than the undoped silicon oxide and silicon nitride as required by
Bosch.
The mere fact that the prior art could be modified would not have made the
modification obvious unless the prior art suggested the desirability of the modification.
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984); In re Laskowski,
871 F.2d 115, 117, 10 USPQ2d 1397, 1398 (Fed. Cir. 1989). The record indicates that the
motivation relied upon by the Examiner for the use of C2H4F2 in the process of Bosch comes
from the Appellants’ description of their invention in the specification rather than coming
from the applied prior art and that, therefore, the Examiner used impermissible hindsight in
rejecting the claims. See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983); In re Rothermel, 276 F.2d 393, 396, 125 USPQ
328, 331 (CCPA 1960). Accordingly, we reverse the Examiner’s rejection under 35 U.S.C.
§ 103(a) of claims 1 to 13 and 18 to 27 over the combination of Bosch and Ding.
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