Appeal No. 2002-1760
Serial No. 09/355,509
The examiner does not compare the facts in Harza with those
in the present case and explain why, based upon this comparison,
the legal conclusion in the present case should be the same as
that in Harza. Instead, the examiner relies upon Harza as
establishing a per se rule that duplication of parts is obvious.
As stated by the Federal Circuit in In re Ochiai, 71 F.3d 1565,
1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995), “reliance on per se
rules of obviousness is legally incorrect and must cease.”
For a prima facie case of obviousness to be established, the
teachings from the prior art itself must appear to have suggested
the claimed subject matter to one of ordinary skill in the art.
See In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA
1976). The mere fact that the prior art could be modified as
proposed by the examiner is not sufficient to establish a prima
facie case of obviousness. See In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). The examiner must
explain why the prior art would have suggested to one of ordinary
skill in the art the desirability of the modification. See
Fritch, 972 F.2d at 1266, 23 USPQ2d at 1783-84.
The examiner argues that one of ordinary skill in the art
would have included an additional reactor in Zinger’s processing
chamber to permit simultaneous heat treatment of wafers in two
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