Ex parte SUMMERFELT et al. - Page 10




          Appeal No. 1998-0765                                                        
          Application No. 08/451,853                                                  



               sheets which are then laminated together.                              
               Thick-film capacitor is defined in McGraw-Hill                         
               Dictionary of Science and Technical Terms, Fourth                      
               Ed., 1989, as follows: "A capacitor in a thick-film                    
               circuit, made by successive screen-printing and                        
               firing processes.”                                                     
          Appellants also argue, id., that,                                           
               [i]n contrast to Uchino's thick-film technology,                       
               Applicant claims a microelectronic capacitor on a                      
               semiconductor substrate for an integrated circuit.                     
               Thin-film is defined in McGraw-Hill Dictionary . . .                   
               as follows: "A film a few molecules thick deposited                    
               on a glass, ceramic, or semiconductor substrate to                     
               form a capacitor, resistor, coil, cryotron, or other                   
               circuit component."                                                    
          Appellants further argue, id. at page 10, that,                             
               Miyasaka does not teach or suggest that it would                       
               be desirable to use the electrodes from laminate                       
               structures taught by Uchino and combine them with                      
               thin-film structures to solve the problems of elect-                   
               rodes for integrated circuit thin-film capacitors.                     
               We agree with the appellants’ position.  The examiner has              
          not convinced us why an artisan would look to Uchino (which                 
          involves a totally different process of thick-film technology)              
          to combine with Miyasaka (which involves the thin-film                      
          technology) to come up with the invention recited in claim 16               
          without using                                                               



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