Appeal No. 95-2454
Application No. 07/396,733
reasonable guidance to those working in the art of the depth of the oxide filled grooves that may reasonably
be used.
Applicant also argues that the examiner has improperly used applicant’s claims as a road map for
combining the references using impermissible hindsight. Brief p. 14-17. We disagree.
In one sense every obviousness rejection is based on hindsight. An examination of an invention for
patentability cannot take place without first knowing what the invention is and then looking for the relevant
prior art with knowledge of the claimed invention. Thus, merely asserting that a rejection uses hindsight
reasoning is not helpful to deciding the obviousness issue. As noted by the CCPA:
Any judgement on obviousness is in a sense necessarily a reconstruction based
upon hindsight reasoning, but so long as it takes into account only knowledge
which was within the level of ordinary skill at the time the claimed invention was
made and does not include knowledge gleaned only from applicant's disclosure,
such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). The information used in
rejecting the claimed subject matter is disclosed in the prior art and is, therefore, within the level of ordinary
skill in the art. The rejection was not based on information gleaned only from applicant’s disclosure. In
our view, impermissible hindsight was not used in rejecting the claimed subject matter.
Applicant notes that independent claims 14 and 36 each require 5 steps:
(1) growing an epi layer on a silicon substrate of opposite conductivity type to the
epi to form a laterally extending PN isolation junction, (2) forming an oxygen -
impervious insulation layer on the epi, (3) creating one or more openings through
the insulation layer, (4) removing exposed epi silicon to form one or more
depressions extending partway through the epi, and (5) thermally oxidizing silicon
exposed through each depression to form an isolation region of oxidized silicon
that extends down to the PN junction so as to divide the epi into a plurality of
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