Appeal No. 95-3455
Application 07/945,902
laminated floating gate electrode. Thus, the basis for
examiner's conclusion that "any arguments establishing
criticality of a laminated floating gate electrode is
irrelevant" (page 10 of the Answer) also escapes us and
erroneously fails to properly consider the claimed method.
While the logic of certain positions taken by the
examiner in his Answer are inescapable, the flaw in the
examiner's positions reside in the fact that there is no
motivation found in the prior art to do what the examiner
suggests. Rather, we find the examiner has relied on
appellants' disclosure for evidence of motivation and
equivalence. Thus, on this record, the examiner has not
factually established the basis upon which he has predicated
the requisite motivation for the proposed combination of
references. In re Laskowski, 871 F.2d 115, 117, 10 USPQ2d
1397, 1398 (Fed. Cir 1989); Smithkline Diagnostics Inc. v.
Helena Laboratories Corp., 859 F.2d 878, 887, 8 USPQ2d 1468,
1475 (Fed. Cir 1988). Moreover, there is scant analysis of
what appellants' claims recite or require in the examiner's
statement of his rejection. Analysis of the claims is the
starting point for the analysis required in Graham v. John
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