Ex parte SHIBIB - Page 10




          Appeal No. 95-5041                                                          
          Application No. 08/163,967                                                  


               Examiner’s proffered combination.  If a “combination                   
               plate” is to be envisioned in accordance with the                      
               Examiner’s reasoning, all of the Terashima plates                      
               (16a through 16e) should be combined, thereby                          
               resulting in a bridging of the entire region from                      
               the high voltage diffusion region (11) to the low                      
               voltage diffusion region (13).  In other words, and                    
               with reference to the terminology of the present                       
               invention, this “combination plate” would create a                     
               first field shield plate having one end in                             
               electrical contact with the high voltage region and                    
               the other end in electrical contact with the low                       
               voltage region and extending above the major surface                   
               over the entire junction extension region.  Such a                     
               result is exactly the configuration shown in                           
               applicant’s prior art FIGS. 2A and 3A.  There is no                    
               teaching whatsoever, nor any suggestion in Terashima                   
               or in any of the prior art to either shorten the                       
               first field shield plate 30 or, in the alternative,                    
               to extend the junction extension region 28 “so that                    
               the junction extension (29) is positioned on the                       
               major surface between the outer edge of the first                      
               field shield plate and the outer edge of the second                    
               field shield plate” as is expressly recited in                         
               applicant’s claim 1.                                                   
                    It is respectfully submitted that the Examiner                    
               has simply exercised impermissible hindsight in                        
               applying the Terashima reference in combination with                   
               applicant’s prior art FIGS. 2A and 3A to reject                        
               applicant’s claims.                                                    
               We agree.  In the absence of a teaching or suggestion in               
          the applied prior art or a convincing line of reasoning by the              
          examiner, the examiner cannot pick and choose among the                     
          conductive plates 16a through 16e in Terashima to select only               
          those conductive plates (i.e., 16b through 16e) that terminate              
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