Appeal No. 2002-0899
Application No.09/609,652
Appellants’ arguments in response to the obviousness
rejection focus on the contention that a prima facie case of
obviousness has not been established since there is no suggestion
or motivation in the disclosures of the Wilcox and Kim references
for the Examiner’s proposed combination. In particular,
Appellants assert (Brief, page 4) that no motivation exists for
substituting the aluminum electrode of Kim for only one of the
copper electrodes of Wilcox.
Upon careful review of the applied prior art in light of the
arguments of record, we are in agreement with Appellants’ stated
position in the Brief. 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, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).
Initially, we find puzzling the Examiner’s proposed
rationale for combining Wilcox with Kim, i.e., to provide a chip
electrode, since Wilcox already has a chip electrode in place.
Further, we do not dispute the Examiner’s assertion that case law
supports the position that the mere selection of a known material
based on its suitability for its intended purpose is prima facie
obvious. Following this principle the skilled artisan would
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