Appeal No. 1996-1758
Application No. 08/358,050
Further, it is our view that the Examiner’s proposed
addition of Wu to the combination of Poleshuk and Ishikura
does not cure the deficiencies of either reference, singly or
in combination. Even assuming arguendo that the recited
limitations of the independent claims are found in the various
references, we find no motivation for modifying any
combination of Poleshuk and Ishikura in the manner suggested
by the Examiner. There is nothing in the disclosures of
either Poleshuk or Ishikura to indicate that current leakage,
the problem addressed by the offset drain structure of Wu, was
ever a concern. Further, the Examiner’s finding (Answer,
pages 4 and 5) that the channel length to gate electrode
length relationship is a matter of obvious design choice is
not supported by the record. 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, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).
In our view, the only basis for applying Wu’s teachings to
Poleshuk and Ishikura comes from an improper attempt to
reconstruct Appellant's invention in hindsight.
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