Appeal No. 2005-1926
Application No. 10/188,723
We note that “the consistent criterion for determination of
obviousness is whether the prior art would have suggested to
one of ordinary skill in the art that this process should be
carried out and would have a reasonable likelihood of success,
viewed in the light of the prior art.” In re Dow Chem. Co.,
837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988) (citing
Burlington Indus. v. Quigg, 822 F.2d 1581, 583, 3 USPQ2d 1436,
1438 (Fed. Cir. 1987); In re Hedges, 783 F.2d 1038, 1041, 228
USPQ 685, 687 (Fed. Cir. 1987)); Orthopedic Equip. Co. v.
United States, 702 F.2d 1005, 1013, 217 USPQ 193, 200 Fed. Cir.
1983); In re Rinehart, 531 F.2d 1048, 1053-54, 189 USPQ 143,
148 (CCPA 1976). It is thus the position of the court that a
proper analysis under Section 103 requires, inter alia,
consideration of two factors: (1) whether the prior art would
have suggested to those of ordinary skill in the art that they
should make the claimed composition or device, or carry out the
claimed process; and (2) whether the prior art would also have
revealed that in so making or carrying out, those of ordinary
skill would have a reasonable expectation of success. Both the
suggestion and the reasonable expectation of success must be
founded in the prior art, not in the applicant’s disclosure.
Dow Chem., supra.
In the instant case, although Todd discloses a preferred
embodiment of supplying the silicon and nitrogen atoms by a Si-N
containing chemical precursor (see paragraph [0026] of Todd),
Todd is not so limited. The chemical precursor need not have a
Si-N bond. Paragraphs [0026] and [0029] of Todd.
Todd teaches that a gas can be provided that comprises a
chemical precursor and a supplemental source. Paragraph [0043]
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