Ex Parte Lee et al - Page 5



         Appeal No. 2006-1871                                       Παγε 5                          
         Application No. 10/245,442                                                                 

         to the here claimed subject matter.  In essence, appellants                                
         seemingly argue that each of the applied references would have to                          
         describe all of the here claimed method steps in an anticipatory                           
         manner in order to be combinable and render the claimed subject                            
         matter unpatentable.  Of course, that is not the legally mandated                          
         test for combining references.  While there must be some                                   
         teaching, reason, suggestion, or motivation to use the cleaning                            
         method of Ameen in conjunction with the deposition process of                              
         Nguyen with or without the specific heater of Mandrekar so as to                           
         result in the claimed process, it is not necessary that each of                            
         the cited references specifically suggest making that particular                           
         combination.  Rather, the test for obviousness is what the                                 
         combined teachings of the references would have suggested to one                           
         of ordinary skill in the art.  See In re Young, 927 F.2d 588,                              
         591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642                           
         F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).                                              
              Moreover, in evaluating such references it is proper to take                          
         into account not only the specific teachings of the references                             
         but also the inferences which one skilled in the art would                                 
         reasonably be expected to draw therefrom.  In re Preda, 401 F.2d                           
         825, 826, 159 USPQ 342, 344 (CCPA 1968).                                                   














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