Appeal No. 1998-1727
Application No. 08/340,097
can be used as a passivation layer. The Examiner directs us to column 2 lines 40 to 50 of
Kasai. The Examiner concludes “[i]t would have been obvious to one of ordinary skill in
the art to modify the de Lyon process by the teachings of the Kasai et al. reference to use
germanium passivation layer in order to decrease the lattice mismatch between the
passivation layer and the substrate.” (Answer, p. 4).
Kasai is directed to a method of forming a wideband anti-reflection coating on a
light receiving surface of an indium antimonide photodetector. Kasai discloses the
passivation layer, formed of germanium, inhibits the flash effect after exposure to light.
(Col. 1, ll. 39-41 and 61-65). Kasai does not discuss lattice match between the
passivation layer and the substrate. The de Lyon reference is concerned with lattice
match however, there is no disclosure that germanium is suitable alternative to arsenic.
(Col. 4, l. 61 to col. 5, l. 10). The record indicates that the motivation relied upon by the
Examiner for using a germanium passivation layer comes from the Appellants’
description of their invention in the specification rather than coming from the applied
prior art and that, therefore, the Examiner used impermissible hindsight in rejecting the
claims. See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ
303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984); In re Rothermel, 276
F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960). Accordingly, we reverse the
Examiner’s rejection under 35 U.S.C. § 103 over the combination of de Lyon and Kasai.
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