Appeal No. 95-1375
Application 08/023,602
[Okano] teaches the use of a protective layer for machining with a laser. The
teachings of [Okano] differ from those of the applicant in that the applicant teaches
the use of a protective layer with areas removed for the purposes of protecting a
surface from a mechanical machine while using the machine to remove material from
said surface. However, the prior art teaches the use of machining a surface and the
problems that occur when said machine tool comes in contact with the surface to be
machined. Therefore, it would have been obvious to one having ordinary skill in the
art to take the teachings of [Okano] and combine them with the knowledge of the
prior art to make the method and mask of the applicant because one would know
from the prior art to protect the surface in the areas that are to be contacted by the
machining tool whatever type of tool it is. [Answer: p. 4.]
The examiner has not explained how Okano teaches the use of a protective layer for machining with
a laser. The claim requires that the formation of a protective structure and that the structure is
formed in the dielectric layer and on the substrate. Okano shows a protective layer which is formed
on the dielectric layer only. None of the embodiments of Okano nor the examiner’s statement of the
disclosed state of the prior art as set forth in the answer teach or suggest forming the protective layer
in the dielectric layer and on the substrate. Moreover, neither Okano nor the examiner’s statement
of the disclosed state of the prior art disclose or suggest machining the laminated structure along the
protective structure. It is well settled that the claims are interpreted in light of the specification as
it would be interpreted by one of ordinary skill in this art. In re Morris, 127 F.3d 1048, 1054-55, 44
USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989). We find that one having ordinary skill in the art upon reviewing appellant’s
specification would have concluded that the machining along the protective structure means that the
machining occurs along the edge of the protective structure as depicted in Fig. 4 of the application
as described on page 13, lines 12-15 of appellant’s specification. Okano does not disclose or suggest
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