Appeal No. 1999-1466
Application No. 08/371,486
associated boundaries, we agree with appellants that the teachings of Madan would not
have been seen as applicable to a thin film transistor device as disclosed by Matsumura.
Even if, as the rejection implies, Madan’s disclosure of quartz and silicon nitride
may have suggested the interchangeability of silicon dioxide and silicon nitride, any
suggestion of interchangeability would not necessarily go beyond the specific application
disclosed by Madan. Madan compares quartz and silicon nitride to thin soda glass used
in earlier experiments (page 242). There is no express suggestion that quartz and silicon
nitride may be used interchangeably in the semiconductor arts in general, nor express
suggestion for use in the specific type of device disclosed by Matsumura. Since the
evidence before us does not support the examiner’s findings with respect to the disclosure
of Madan, we agree with appellants that Madan would not have suggested substituting the
silicon dioxide gate insulator of Matsumura with a gate insulator of silicon nitride.
The allocation of burdens requires that the USPTO produce the factual basis for its
rejection of an application under 35 U.S.C. § § 102 and 103. In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011,
1016, 154 USPQ 173, 177 (CCPA 1967)). The one who bears the initial burden of
presenting a prima facie case of unpatentability is the examiner. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). We are persuaded by appellants
that the teachings of LeComber and Madan are deficient in providing a factual basis for
the suggestion to substitute, in a device as disclosed by Matsumura, a silicon dioxide gate
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