Appeal No. 95-0638
Application 08/011,094
clearly recited in the claims. Therefore, the limitation cannot
be ignored or dismissed as not being properly included within the
claims.
Finally, the examiner asserts that the claimed thickness
of the copper layers could have been obtained by trial and error
without undue experimentation or hardships by the artisan. This
standard clearly is inappropriate under 35 U.S.C. § 103. There
must be something in the prior art which would have led the
artisan to make the claimed modification. It is not enough that
the prior art could have been modified to arrive at the claimed
invention. The prior art must suggest such modification to the
inventor. The only teaching on this record of using copper
layers in this art having a thickness between 0.5 and 7 mils
comes from appellants’ own disclosure. In the absence of
appellants’ disclosure, there would be no motivation to use
copper layers of the claimed thickness.
Thus, for each of the rejections, the issue comes down to
the examiner’s bare assertion that the thickness of the copper
layers is a mere design choice compared to appellants’ arguments
that the specific claimed values represent a critical discovery
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007