Appeal No. 2005-0968 Page 5
Application No. 09/998,343
1598 (Fed. Cir. 1988). Only if this initial burden is met does the burden of coming
forward with evidence or argument shift to the Appellants. Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d at 1472, 223
USPQ at 788.
An obviousness analysis commences with a review and consideration of all
the pertinent evidence and arguments. “In reviewing the [E]xaminer’s decision on
appeal, the Board must necessarily weigh all of the evidence and argument.”
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. “[T]he Board must not only
assure that the requisite findings are made, based on evidence of record, but must
also explain the reasoning by which the findings are deemed to support the
agency’s conclusion.” In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434
(Fed. Cir. 2002).
With respect to independent claim 1, Appellants argue at pages 5-6 of the
brief, “Chacon in particular teaches away from [Appellants’] claimed invention,” and
“Chacon clearly teaches away from appellants, claimed invention since appellants’
claimed invention is directed towards a production control system and method
where a customer may experiment with actual production.” We find Appellants’
argument unpersuasive.
We have reviewed Appellants’ claim 1 and find no mention of
experimentation in the claim. Further, we find that the Examiner has relied on
Chacon (answer at page 4) solely to teach that it is known to use a control system
for scheduling and routing microelectronic fabrication work in progress. As
Appellants themselves admitted at paragraph 003 of the specification, such control
systems are “[c]ommon in the art of microelectronic fabrication.”
We also note that even if “experimentation” were claimed, as Appellants point
out, Chacon teaches “a practical alternative to expensive experimentation on [an]
actual production system.” The fact that Chacon teaches an alternative system
without experimentation does not constitute a teaching that artisans should avoid the
experimentation method altogether. A prior art reference that “teaches away” from
the claimed invention is a significant factor to be considered in determining
obviousness; however, “the nature of the teaching is highly relevant and must be
weighed in substance. A known or obvious composition does not become patentable
simply because it has been described as somewhat inferior to some other product for
the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir.
1994).
Appellants argue at pages 7-9 of the brief, that process “changes” in
Athavale are limited to comparatively inexpensive, lower cost, simple (non-
complex) manufacturing processes and would not be applicable to expensive, high
cost, complex microelectronic fabrication processes such as Chacon. We find this
argument unpersuasive.
The “change in production” of claim 1 is disclosed in Appellants’
specification at page 15 as a simple customer order “hold” operation. Appellants’
claim clearly covers simple process changes in a complex microelectronic
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