Appeal No. 95-2454
Application No. 07/396,733
Applicant argues that the teachings of the Frouin, Murphy, Doo and Makimoto references are not
combinable. We do not agree. All the references relate to a process for manufacturing integrated circuits
having electrically isolated regions. They are clearly from the same field of endeavor and therefor constitute
analogous prior art. In re Deminski, 796 F.2d 436, 442, 230 USPQ 313, 315 (Fed. Cir. 1986); In re
Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979), cert. denied, 111 S. Ct. 1682 (1991).
The hypothetical person of ordinary skill in the art is thus charged with knowledge of the content of those
references. In re Dillon, 919 F.2d 688, 694, 16 USPQ2d 1897, 1902 (Fed. Cir. 1990) (in banc). The
teachings of analogous prior art references are combinable. In re Reuter, 670 F.2d 1015, 1020 n.7, 210
USPQ 249, 254 n.7 (CCPA 1981); In re Kyser, 588 F.2d 303, 307, 200 USPQ 211, 214 (CCPA
1978); In re Menough, 323 F.2d 1011, 1013, 139 USPQ 278, 280 (CCPA 1963). Thus, the teachings
of Frouin, Murphy, Doo and Makimoto are combinable. In any event, one having ordinary skill in the art
would have been motivated to utilize Murphy’s channel forming technique and eliminate the polycrystalline
semiconductor deposition and removal steps taught by Frouin. Additionally, the person having ordinary
skill in the art would have known, from Doo’s disclosure, that the combination of polycrystalline silicon and
silicon oxide is an alternative to silicon oxide in forming electrical insulation channels. Doo, col. 5, lines
12-15. An express suggestion to substitute one alternative for another need not be present to render such
substitution obvious. In re Fout, 675 F.2d 297, 301, 213 USPQ 532, 536 (CCPA 1982). Similarly, the
person having ordinary skill in the art would have been motivated to substitute Frouin’s technique for
Makimoto’s for the reasons already stated above.
Claims 2-3, 5, 6, 12, 15, 19, 20, 26-28, 30, 31, 33-35, 37-41, 48, 50-52 and 59
Applicant’s brief does not assert the separate patentability of these claims over the claims from
which they depend. Accordingly, claims 2-3, 5, 6, 12, 15, 19, 20, 26-28, 30, 33-35, 37-41, 48, 50-52
and 59 fall with their respective independent claims.
Claims 7-9, 29, 32, 42-47, and 53-58
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