Appeal No. 1996-1616
Application No. 08/158,673
and 9 stand or fall with claim 1, we also will affirm the
obviousness rejection of those claims.
As to claim 5, Blanchard's body region 63 could be viewed
as isolating the transistor from the diode. Blanchard,
however,
does not disclose a trench to separate the two elements. The
examiner turns to Müller to substitute a trench structure for
Blanchard's isolation element. The examiner states (Final
Rejection, page 4) that "the prior art teaches that a trench
structure can be used to isolate elements which inturn [sic]
decreases noise interference between integrated circuits on
the same substrate." We find no teaching or suggestion in
Müller, and the examiner fails to point to any particular
portion, which would motivate one of ordinary skill in the art
to use a trench in Blanchard's device. Merely that the prior
art can 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, 23 USPQ2d 1780, 1783-4 (Fed. Cir. 1992).
"There must be some reason, suggestion, or motivation found in
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007