Appeal No. 2005-2100
Application No. 09/826,038
inter alia, that Funk fails to teach that “wet etching takes place after dry etching.” See
e.g., Brief, page 5. In addition, the majority recognizes (supra, page 5), Appellant’s
assertion
that the Examiner has failed to establish a realistic motivation to modify
Funk so as to arrive at the claimed limitation of performing wet etching
after dry etching. Appellant argues that the Examiner’s assertion that “it
would have been obvious to one with ordinary skill in the art to perform
various processes in various sequences depending on the specific product
requirement” is overly broad and based on generalities.
In this regard, I note that conclusions of obviousness must be based upon facts, not
generality. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968); In re Freed, 425 F.2d 785, 788, 165 USPQ 570,
571 (CCPA 1970).
The majority recognizes that Funk does not teach a dry etching step followed by
a wet etching step, as is required by Appellant’s claimed invention. Supra page 8. The
majority finds, however, “[t]he fact that Funk does not attach an importance to the
order of the types of etching steps is in effect a teaching that a particular order can be
selected based upon process/product requirements.” Supra, bridging paragraph, pages
8-9. Therefore, the majority finds that a prima facie case of obviousness has been
established because “Funk suggests to one of ordinary skill in the art that dry etching
and wet etching can be conducted, and that the specific order of such etching will be
chosen according to the specific requirements.” Supra page 9. What “specific
requirements” would be necessary to lead a person of ordinary skill in the art to
Appellant’s claimed invention, the examiner, the majority and Funk do not say. In this
regard, I remind the majority that “selective hindsight is no more applicable to the
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