Ex parte SATOH et al. - Page 9




          Appeal No. 95-2599                                                          
          Application 07/983,931                                                      


          differences that Appellants have disclosed in their specifi-                
          cation.  In addition, Sato teaches on page 9 that the T-shaped              
          electrode is formed by plasma etching, the same etching process             
          as disclosed by the Appellants.                                             
               We acknowledge that Sato does not teach in great detail how            
          the T-shaped electrode is formed by a single step.  However, Sato           
          does teach the same material with the different physical feature            
          that would have a different etch rate.  Viewing the Sato                    
          teachings as whole, we find that Sato inherently teaches that "a            
          shaped conductive layer formed by etching ... with the lower                
          portion having a faster etch rate as compared with an etch rate             
          of the upper portion under the same etching conditions” as                  
          recited in Appellants' claim 25.                                            
               In the alternative, we find that it would have been obvious            
          to one of ordinary skill from the Sato teaching to provide "a               
          shaped conductive layer formed by etching ... with the lower                
          portion having a faster etch rate as compared with an etch rate             
          of the upper portion under the same etching conditions" as                  
          recited in Appellants' claim 25.  The Federal Circuit reasons in            
          In re Para-Ordnance Mfg. v. SGS Importers Int’l, Inc.,73 F.3d               
          1085, 1088-89, 37 USPQ2d 1237, 1239-40, that for the determin-              
          ation of obviousness, the court must answer whether one of                  

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