Appeal No. 1999-2115
Application No. 08/724,574
desirability or motivation for using such a reflowing step in Yu
'843. It is only with the benefit of the appellants' own
disclosure that the examiner has arrived at a conclusion of
obviousness. In re Warner, 397 F.2d 1011, 1016, 154 USPQ 173,
177 (CCPA 1967) ("[W]here the invention sought to be patented
resides in a combination of old elements, the proper inquiry is
whether bringing them together was obvious and not, whether one
of ordinary skill, having the invention before him, would find
it obvious through hindsight to construct the invention from
elements of the prior art."); In re Rouffet, 149 F.3d 1350,
1359, 47 USPQ2d 1453, 1459 (Fed. Cir. 1998) ("[T]he Board must
explain the reasons one of ordinary skill in the art would have
been motivated to select the references and to combine them to
render the claimed invention obvious."); In re Dembiczak, 175
F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999) ("[T]he
best defense against the subtle but powerful attraction of a
hindsight-based obviousness analysis is rigorous application of
the requirement for a showing of the teaching or motivation to
combine prior art references.").
For these reasons, we cannot uphold rejection I.
The examiner has relied on Tang only for the teaching
relating to a thermal anneal tool as recited in appealed claim
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007