Appeal No. 2002-0677
Application 09/257,899
To arrive at the appellant’s claimed methods by combining
the applied references as proposed by the examiner, one of
ordinary skill in the art would have had to substitute Fazan’s
polycrystalline silicon-germanium alloy macroscopic island
layer/polysilicon layer combination for Hirota’s polysilicon
hemispherical grain layer, and then apply Hirota’s etching step
to Fazan’s macroscopic islands. The examiner has not provided
the required explanation as to why the applied prior art itself
would have provided one of ordinary skill in the art with a
motivation to make this substitution and a reasonable expectation
of success in doing so. See In re Vaeck, 947 F.2d 488, 493, 20
USPQ2d 1438, 1442 (Fed. Cir. 1991); In re O’Farrell, 853 F.2d
894, 902, 7 USPQ2d 1673, 1680 (Fed. Cir. 1988). The examiner’s
argument that “the motivation is found in the knowledge generally
available to one of ordinary skill in the art” (answer, page 6)
is not sufficient for carrying this burden; nor is the examiner’s
argument that one of ordinary skill in the art would have made
the proposed substitution “with an anticipation of an expected
result” (answer, pages 4 and 5).
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