Appeal No. 2002-1992
Application 09/206,170
Also like Schonauer ‘769, however, Grieger does not disclose
applying the cleaning solution to copper.6
The examiner argues that use of the appellants’ surface
treatment times and surface removal thicknesses would have been
an obvious design choice based upon well known manufacturing
constraints, and would have been ascertainable by routine
experimentation (answer, pages 5-6). In order for a prima facie
case of obviousness to be established, however, the teachings
from the prior art itself must appear to have suggested the
claimed subject matter to one of ordinary skill in the art. See
In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA
1976). The mere fact that the prior art could be modified as
proposed by the examiner is not sufficient to establish a prima
facie case of obviousness. See In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). The examiner must
explain why the prior art would have suggested to one of ordinary
6
6 The examiner argues that “Grieger teaches that common
process chemicals such as copper complexing citric acid may be
added to the wash solution to enhance the removal of metallic
contaminants (column 6 lines 25-35)” (answer, page 12). The
portion of Grieger relied upon by the examiner discloses citric
acid, but does not disclose its use for complexing copper.
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