Appeal No. 96-1763
Application No. 08/056,941
OPINION
After a careful review of the evidence before us, we disagree with the Examiner that
claims 1, 2 and 5-12 are properly rejected under 35 U.S.C. § 103, and we will not sustain
the rejection of claims 1, 2 and 5-12.
As a consequence of our review, we make the determinations which follow.
Rejection of Claims 1, 5, 6 and 11
under 35 U.S.C. § 103
Turning to the rejection of independent claim 1, we find that the examiner has not
met the burden of setting forth a prima facie case of obviousness in rejecting claim 1. As
pointed out by our reviewing court, we must first determine the scope of the claim. "[T]he
name of the game is the claim." In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d
1523, 1529 (Fed. Cir. 1998). Claim 1 sets forth a specific structure of interrelated layers
of a semiconductor element. After a complete review of the administrative proceedings
and the references applied against the claims, we find that the Examiner has not set forth a
prima facie case of obviousness, nor has the Examiner clearly set forth a convincing line
of reasoning as to why it would have been obvious to one of ordinary skill in the art at the
time of the invention to modify and/or combine the referenced teachings in a manner to
meet the limitations of the claimed invention.
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