Appeal No. 1999-0887
Application No. 08/702,074
device’s breakdown voltage.” (Id.)
In response, Appellants assert that the Examiner has
failed to set forth a prima facie case of obviousness since
proper motivation for one of ordinary skill to make the
Examiner’s proposed combination has not been established.
Upon careful review of the applied prior art, we are in
agreement with Appellants’ stated position in the Briefs. 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. In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14
(Fed. Cir. 1992).
It is our view that, while a showing of proper motivation
does not require that a combination of prior art teachings be
made for the same reason as Appellants to achieve the claimed
invention, we can find no motivation for the skilled artisan
to apply the cobalt doped silicon teachings of Moore to the
semiconductor device of Temple. As pointed out by Appellants
(Brief, page 8), Moore is directed to the measurement of
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