Appeal No. 1998-2401
Application 08/286,106
to how the build-up layer of Ehrlich is utilized after it is
formed. Ehrlich only indicates that the build-up layer results
in a patterned film (see, e.g., claims 1 and 20).
Also, while the examiner states that there is a motivation
to utilize the process of forming the build-up layers in Ehrlich
in the process of Jelks based upon the fact that Ehrlich’s
method allows the separation of the delineation phase of the
film formation from the growth phase, and, as a result, to use
separate sources for production of the atom flux in the two
phases (answer, pages 4-5), we find that the examiner has not
explained why the process in Jelks would necessarily benefit
from this aspect of Ehrlich's invention. That is, the examiner
has not provided an explanation of why one of ordinary skill in
the art would have been motivated to utilize the benefit of
Ehrlich's invention regarding the ability to use separate
sources for production of the atom flux in the two phases, in
the method of Jelks.
Hence, like the appellants, we believe that the only
guidance for so combining the applied reference teachings is
based upon impermissible hindsight derived from appellants’ own
disclosure (W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540,
1553, 220 USPQ 303, 312-313 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984)) rather than some teaching, suggestion or
incentive derived from the prior art (ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir., 1984)).
Therefore, we reverse the rejection of claims 1, 4-7, 10-
12, 17-19 under 35 U.S.C. § 103 as being unpatentable over the
combination of Ehrlich and Jelks.
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