Appeal 2006-1078
Application 09/425,694
and not to perform some “reactive process''(column 5, lines 1-17). The
rinsing fluid still maintains its function of removing chemical from the
electronic components because the HCI is only present in a minute
concentration and specifically present in an amount, which is non-reactive.
Absent from the examiner’s explanation is some factual basis to establish the
desirability of replacing Pirooz’s deionized water rinse with another rinsing solution.
Moreover, given Pirooz’s teaching that a deionized water rinse is necessary unless the
ozonated bath is “acid-free” (see col. 3, ll. 35-41), the examiner was obligated to provide
some evidentiary basis for his conclusion that the one of ordinary skill in the art would
have been motivated to use a rinsing solution containing even a minimal amount of HCl.
In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1532 (Fed. Cir. 1988)
("Evidence that supports, rather than negates, patentability must be fairly considered.").
“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,
1783-74 (Fed. Cir. 1992). See In re Lee, 277 F.3d 1338, 1343-44, 61 F.2d 1430, 1434
(Fed. Cir. 2002) (“[The] factual question of motivation is material to patentability, and
could not be resolved on subjective belief and unknown authority.”)1
1 We note that the examiner’s statement that “appellant's also teach an embodiment
where the final treatment could be aqueous HCI or water (page 2, lines 1-3 of the specification),
which suggests that appellant's final aqueous HCI step also functions more as a rinse step”
suggests that improper hindsight reasoning was employed. See In re Fritch, 972 F.2d 1260, 23
USPQ2d 1780 (Fed. Cir. 1992) (quoting W.L. Gore v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 312-13 (Fed.Cir.1983)(“In determining whether a person of ordinary skill would have
been led to this combination of references, simply to ‘[use] that which the inventor taught
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007