Appeal No. 1999-0544 Page 5
Application No. 08/324,842
Moreover, we agree with Appellants that the Examiner improperly combined two
separate processes disclosed by Honjo (Brief at 5). Specifically, the Examiner combined the
prior art partial plating method wherein the substrate is masked with resist (Honjo at col. 1, ll.
49-55), with Honjo’s inventive process which contains no masking step but which describes a
heating step. Anytime a teaching is modified, here must be a showing of a suggestion or
motivation to make the modification. See In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430,
1433 (Fed. Cir. 2002). This is true even if two distinct teachings are contained in one reference
and modification of one would be obvious in view of the other. Honjo does not teach a process
with both a heating step and a masking step. The Examiner did not provide a reasonably specific
reason, suggestion, or motivation for the combination.
To establish a prima facie case of obviousness, the Examiner must show some objective
teaching in the prior art or otherwise provide a basis to believe that knowledge generally
available to those of ordinary skill in the art would have lead those artisans “to make the specific
combination that was made by the applicant.” In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d
1635, 1637 (Fed. Cir. 1998); In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988). With respect to the process of claim 1, such evidence is lacking. Therefore, we conclude
that the Examiner did not establish a prima facie case of obviousness with respect to claim 1 and
the claims dependent thereon.
We now focus on the other independent claim, claim 13. Claim 13 requires a step of fire-
cleaning a substrate at a temperature of about 800 °C to about 1500 °C. The Examiner
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