Appeal No. 96-1656
Application 08/182,809
claims 23 and 30-36 over Morita alone. We sustain the rejection
of claim 22, which does not have the spin-on-glass limitation.
Obviousness of Claims 22, 23, 37, 38, 39, and 41-45
We sustain the examiner’s third rejection (Examiner’s
Answer at 6-7) primarily for the reasons of the examiner, with
the following amplifying comments.
The mere fact that the prior art may be modified in the
manner suggested by the examiner does not make the modification
obvious unless the prior art suggested the desirability of the
modification. In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d
1780, 1783-84 n.14 (Fed. Cir. 1992).
In the present case, the examiner appropriately relies
on Mazzali for providing motivation to one of skill in the art
for using spin-on-glass in Morita in order to achieve planarity.
Mazzali at column 3, lines 19-47 and column 5, lines 22-25.
Thus, we find that the prior art suggested the desirability of
using spin-on-glass.
It appears that this rejection should have included
claims 30-36 under the same rationale. Therefore, we enter the
following new ground of rejection.
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