Appeal No. 2001-0482
Application No. 09/186,078
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966),
and to provide a reason why one having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive at the claimed invention. Such
reason must stem from some teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in the art. Uniroyal Inc. v. Rudkin-
Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657,
664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings
by the Examiner are an essential part of complying with the burden of presenting a prima facie case
of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
With respect to independent claims 1 and 20, the Examiner, as the basis for the obviousness
rejection, proposes to modify the semiconductor device manufacturing method disclosure of Son
which describes the formation of an insulated trench in the semiconductor substrate. According to
the Examiner (Answer, page 3, which makes reference to the Office action mailed November 19,
1999, paper no. 6), Son discloses the claimed invention except for “... the formation of the gate
oxide on the main surface of the substrate after the formation of the trench isolation.” To address
this deficiency, the Examiner turns to Fulford which discloses the formation of a gate and a gate
oxide layer as part of a semiconductor fabrication method employing shallow trench isolation. In
the Examiner’s analysis (id.), the skilled artisan would have found it obvious to “... form the gate
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