Appeal 2006-2759
Application 10/043,860
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” (quoting In re Gurley, 27 F.3d
551, 553 [31 USPQ2d 1130, 1131] (Fed. Cir. 1994))); In re Fulton,
391 F.3d 1195, 1201, 73 USPQ2d 1141, 1145-46 (Fed. Cir. 2004) (prior art
“disclosure does not criticize, discredit, or otherwise discourage the solution
claimed”). Indeed, we find no teaching in Miller which specifically
criticizes the teachings of Torii. See generally, In re Young, 927 F.2d 588,
591-92, 18 USPQ2d 1089, 1091-92 (Fed. Cir. 1991).
We further disagree with Appellants’ position that Torii and Miller are
not combinable because Torii does not specifically teach the application of
the method disclosed therein to metals other than tungsten, and thus Miller’s
method for copper would not be expected to be successful in Torii’s method
for tungsten (Br. 12-13). There is no requirement that the method of a
reference must be capable of being incorporated into the method of another
reference before it would have been combined by one of ordinary skill in
this art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881-82 (CCPA
1981)(“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”). As the Examiner points out in explaining the rejection, one of
ordinary skill in this art would have found in Miller the teaching to remove
the material applied to the wafer in one step by rinsing the wafer before
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