Appeal No. 2002-0834
Application 09/275,386
the presence of the azole compound etching inhibitor is not
disclosed or suggested in Johnson.
Appellants acknowledge that Johnson teaches that any known
stabilizer for hydrogen peroxide can be used. Appellants argue
that Johnson does not teach that the composition contains a
corrosion inhibitor. (brief, page 10)
Appellants further argue that the combination of Johnson in
view of Bohnen is inappropriate in view of the different etching
activities discussed on pages 11 and 12 of their brief. On page
12 of the brief, appellants argue that the benzotriazole of
Bohnen as a stabilizer for hydrogen peroxide bears no relation to
the discovery that benzotriazole is a corrosion inhibitor for
deoxidizing aluminum.
We note that for a prima facie case of obviousness to be
established, the reference need not recognize the problem solved
by the appellants. See In re Kemps, 97 F.3d 1427, 1430,
40 USPQ2d 1309, 1311 (Fed. Cir. 1996); In re Beattie, 974 F.2d
1309, 1312, 24 USPQ2d 1040, 1042 (Fed, Cir. 1992); In re Dillon,
919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)
(en banc), cert. denied, 500 U.S. 904 (1991); In re Lintner,
458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972). We also note
that one cannot show nonobviousness by attacking the references
individually where the rejection is based on the combined
teachings of the references. As explained by the Court in In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981):
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure
of the primary reference; nor is it that the claimed invention
must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007