Ex Parte Akram - Page 5




             Appeal 2007-2304                                                                                    
             Application 10/209,004                                                                              

             reducing current leakage.  The claims merely require that a capacitor having an                     
             electrode formed by the method has reduced current leakage.  Because, like the                      
             Appellant’s electrode, Hosaka’s electrode has rounded corners formed by wet                         
             etching (Hosaka 3), it appears that like the Appellant’s capacitor having a rounded-                
             corner electrode, Hosaka’s capacitor having such an electrode has reduced current                   
             leakage.  Thus, even if Hosaka is not addressing the problem of current leakage,                    
             the combination of Sandhu and Hosaka meets the requirements of the Appellant’s                      
             claims 1 and 7.                                                                                     
                   The Appellant argues that obviousness requires that the applied references                    
             suggest the desirability of their combination and provide a reasonable expectation                  
             of success in combining their teachings (Br. 10; Reply Br. 2).  Obviousness does                    
             not require such a rigid application of the teaching-suggestion-motivation test.  See               
             KSR Int’l. Co. v. Teleflex Inc., 127 S.Ct. 1727, 1739, 82 USPQ2d 1385, 1395                         
             (2007).  Instead, inferences from the prior art and creative steps that a person of                 
             ordinary skill in the art would employ can be taken into account.  See KSR., 127                    
             S.Ct. at 1741, 82 USPQ2d at 1396.  One of ordinary skill in the art would have                      
             been led, through no more than ordinary creativity, to apply Hosaka’s wet etch to                   
             Sandhu’s electrode to provide the above-discussed benefits of the wet etch                          
             disclosed by Hosaka.  See KSR., 127 S.Ct. at 1742, 82 USPQ2d at 1397 (“A person                     
             of ordinary skill is also a person of ordinary creativity, not an automaton.”).                     
                   For the above reasons we are not convinced of reversible error in the                         
             rejection of claims 2 and 7 and claims 4-6, 9 and 10 that stand or fall therewith.                  

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