Appeal No. 1998-3078 Page 6
Application No. 08/365,617
to piece together the teachings of the prior art so that the
claimed invention is rendered obvious.” In re Fritch, 972
F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992) (citing
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984)). "[T]o establish obviousness based on a
combination of the elements disclosed in the prior art, there
must be some motivation, suggestion or teaching of the
desirability of making the specific combination that was made
by the applicant." In re Kotzab, 217
F.3d 1365, 1370, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000) (citing
In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637 (Fed.
Cir. 1998) and In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984)).
Here, the examiner fails to identify a sufficient reason
to combine Hayden with the Dhong. He merely opines, "[i]t
would have been obvious ... to form Dhong et al's DRAM cell in
a 'seam-free' single crystal semiconductor substrate as
suggested by Hayden." (Id.) Such a broad, conclusory opinion
does not meet the requirement for some motivation, suggestion,
or teaching of the desirability of making the combination.
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