Appeal No. 95-5066
Serial No. 07/931,330
sizes as Ketcham has done in several examples (see e.g., column 11, lines 27-28; column 15, line 63;
and, column 6, lines 49-51). While the references could be combined as the examiner argues, the
examiner has failed to provide a reason why the references should be combined. "Obvious to try" is
not the standard for patentability under 35 U.S.C. § 103. In re O'Farrell, 853 F.2d 894, 903, 7
USPQ2d 1673, 1681 (Fed. Cir. 1988); In re Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1596, 1599
(Fed. Cir. 1988).
Assuming arguendo that the examiner is relying on the word "monolithic" used by Dubuisson
for motivation, such reliance appears misplaced. "Monolithic" as defined in the McGraw-Hill8
DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS, second edition, means "constructed
from a single crystal or other single piece of material" (page 1046). For example, a "monolithic ceramic
capacitor" is defined as
A capacitor that consists of thin dielectric layers interleaved with staggered metal-film
electrodes; after leads are connected to alternate projecting ends of the electrodes, the
assembly is compressed and sintered to form a solid monolithic block" (Id., page
1046).
The scientific/technical definition of "monolithic" as a "single element" is consistent with the disclosure in
Dubuisson referring to joining two superposed substrates together "to form a single monolithic
8 The word "monolithic" is emphasized in the examiner's discussion of Dubuisson in the Substitute
Answer on page 4 and the word "large" is used to characterize Dubuisson on page 5.
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